White v. Jeffrey Min. Machinery Co.
| Decision Date | 07 December 1983 |
| Docket Number | No. 83-640,83-640 |
| Citation | 723 F.2d 1553,220 USPQ 703 |
| Parties | Letcher T. WHITE, Appellee, v. JEFFREY MINING MACHINERY COMPANY, Jeffrey Galion, Inc., and Dresser Industries, Inc., Appellants. Appeal |
| Court | U.S. Court of Appeals — Federal Circuit |
William H. Webb, Pittsburgh, Pa., argued, for appellants. With him on the brief were John M. Webb, David C. Bruening, Pittsburgh, Pa., and Robert L. Milby, London, Ky David Yancey White, Corpus Christi, Tex., argued, for appellee.
Stanley Price, Jr., Pittsburgh, Pa., of counsel.
John M. Lyttle, Manchester, Ky., of counsel.
John F. Booth, Dallas, Tex., of counsel.
Before DAVIS, Circuit Judge, NICHOLS, * Senior Circuit Judge, and JACK R. MILLER, Circuit Judge.
This is an appeal from the United States District Court for the Eastern District of Kentucky. Plaintiff-appellee White sued Jeffrey Mining Company, et al. ("Jeffrey") for infringement of claims 1, 12, and 13 of his United States Patent No. 3,524,680 1 for a mining machine. After a jury trial, the patent claims in issue were held valid and found infringed. The jury awarded White $8 million, which was increased to $12 million by the trial judge. Jeffrey's motions for judgment notwithstanding the verdicts and for a new trial were denied. We reverse on the validity of the patent claims and vacate the award of damages. The issue of infringement is not raised on the appeal.
White originally brought suit in 1974 against Jeffrey for infringement and for unfair competition arising from development and sale of Jeffrey's 101MC mining machine. Claim 1 is illustrative:
and bearings for said shaft
having mechanical connection with said scavenger board whereby the latter moves laterally with said shaft.
Claim 12 2 further defines the scavenger board as a pair of overlapping flat plates vertically slidably connected to each other, the board forming with the floor of the mine and the vein of coal a trough in which the helix acts as an auger conveyor to move coal endwise of the trough. Claim 13 3 requires that the scavenger board comprises The White invention is illustrated in the patent, thus:
relatively vertically movable elements having a lower edge resting on the floor of the mine.
Shaft 36 has a helix 28 thereon with cutting elements 46 provided at spaced points. Motors 38 provide means for driving the shaft. Hydraulic rams 52 apply lateral force to move the helix laterally into a vein of coal. A scavenger board 104 is on the side of the helix opposite the vein of coal and forms with the floor of the mine and the vein of coal a trough in which the helix acts as an auger conveyor to move coal endwise of the trough. The illustrated embodiment is a "longwall miner."
The accused 101MC miner is illustrated as follows:
NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE
THE PRIOR ART
United States Patent No. 3,445,139 to Von Hippel teaches a longwall miner having a helical cutter that acts as an auger to move coal endwise of the helix, as shown below:
United States Patent No. 3,161,439 to Newton et al. discloses a continuous miner having a helical cutter on the end of each of two arms. When cutting, the arms swing in an arc from the position shown in figure A to that shown in figure B. The cut coal is confined by a cuttings confining plate and a scraper blade (see figure C). The helical cutters "advance the mined material rearwardly" into the path of the screw conveyors that, in turn, move it to the central conveyor. A subsequent cut would follow the dotted line in figure B.
East German Patent No. 20,646 to Seidelbach teaches a miner that cuts from the floor of a mine. Helical cutters act as augers to convey cut material inward to a central conveyor.
Von Hippel was considered by the Patent and Trademark Office ("PTO") during prosecution of the application on which the White patent issued; Newton et al. and Seidelbach were not. The trial court also considered several other prior art patents, as well as mining machines marketed by Jeffrey before White's date of invention.
The questions of obviousness, anticipation, and infringement were submitted in the form of special interrogatories to the jury, which resolved those questions in favor of White in the form of several individual verdicts. The jury did not return a general verdict and did not state any findings regarding scope and content of the prior art, differences between the prior art and the claimed invention, or level of ordinary skill in the art. 4 In response to Jeffrey's motions for judgment notwithstanding the verdicts, the court said: "if the question of obviousness is one of law, the Court adopts the answers to the interrogatories by the jury on that issue." 5
It is necessary first to treat Jeffrey's argument that the court below erred in failing to make an independent evaluation of the question of obviousness. Jeffrey argues that the judge improperly submitted this question of law to the jury and adopted its conclusion as his own, without the benefit of underlying findings of fact. The argument is without merit. Submission of such a question of law to a jury, accompanied by appropriate instructions, is proper. Connell v. Sears, Roebuck & Co., 722 F.2d 1542 (Fed.Cir.1983). Moreover, we are satisfied that the trial court effectively ruled on the question of obviousness by its disposition of Jeffrey's motions for judgment notwithstanding the verdicts and for a new trial. However, as related above, there is an absence of stated findings on which a conclusion of obviousness can be reviewed. Nonetheless, it appears that the parties are in substantial agreement on the facts bearing on the question of obviousness. The relevant prior art is embodied in the Von Hippel patent, the Newton et al. patent, the Seidelbach patent, and the other patents before the court, as well as the mining machines marketed by Jeffrey before White made his invention. White acknowledges in his brief that "[t]he scope and content of the prior art as cited by Defendants is not an issue." Likewise, the level of ordinary skill in the art is not a point of serious disagreement. Jeffrey proposes that "[t]he tools that the man of ordinary skill had available to him are shown in the patents, publications and prior art machines." White suggests that the level of ordinary skill in the art is best determined by the types of mining machines that were on the market at the time the invention was made, but he does not contest Jeffrey's statement regarding the "tools available" to a person of ordinary skill in the art. Finally, White's expert witness Flanagan and Jeffrey's expert witness Starkey agreed in many respects in their evaluation of the differences between the claimed invention and the prior art. 6 Accordingly, we will, in the interest of judicial economy, consider the obviousness of claims 1, 12, and 13. See Dual Manufacturing & Engineering, Inc. v. Burris Industries, Inc., 619 F.2d 660, 666-67, 205 USPQ 1157, 1163-64 (7th Cir.) (en banc), cert. denied, 449 U.S. 870, 101 S.Ct. 208, 66 L.Ed.2d 90 (1980).
White does not contest that Newton et al. disclose a mining machine with a shaft, a helix with cutting elements on the edge, means to drive the shaft, a rigid scavenger board opposite the vein coextensive with the helix, bearings, and a mechanical connection that moves the scavenger board laterally with the shaft. The only different argued 7 is that the Newton et al. machine does not move the helix laterally into the vein of coal. However, it is clear that the helical cutters at the end of the arms of the Newton et al. machine cut with their edges (as opposed to their ends) in the same manner as the machine disclosed in the White patent, which specifies that the cutter is moved "broadside into the vein of coal." Moreover, when cutting, the Newton et al. cutters move into the coal at an angle of approximately 90? to the axis of the shaft. The cutters do not move in a straight line into the coal, but describe an arcuate path as the two arms swing together. For this reason, White argues, the cutters are not moved laterally into the vein of coal. White cites no expert testimony to support this argued distinction. However, even if we were to assume that bare novelty is thus imparted to the claim 1 invention, the missing limitation is clearly taught by both Von Hippel and Seidelbach. White acknowledges that the Von Hippel miner moves laterally into the vein of coal to cut the latter, but argues that the Seidelbach machine will not move laterally into a vein of coal because it is a floor-cutting machine. However, the machine, according to the uncontradicted testimony of Starkey, will move into the face of the coal. Moreover, the patent explains that the Seidelbach machine is used to undercut the face of the...
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