Comaper Corp. v. Antec, Inc., 596 F.3d 1343 (Fed. Cir. 2010) (DYK, Rader & Gajarsa) Comaper03012010
MAJOR ISSUES: obviousness; inconsistent jury verdicts; independent claim valid but dependent claim invalid; analogous art; expert testimony showing obviousness
COMMENT: This decision is one of many showing the awkwardness of presenting to a jury an issue of the validity of patent claims, especially obviousness. One, oft-noted danger is that a jury will not understand the technology, but another problem is a jury may not grasp the niceties of patent law doctrine. In this case, the jury found a patent’s independent claim not invalid as obvious but a claim dependent on the independent claim invalid. That is impossible, of course, because the dependent claims is narrower in scope. The jury may have thought the limitation added by the dependent claim to have been, in isolation, obvious or shown in the prior art, but one cannot tell unless a jury is asked for detailed responses to interrogatories.
Another lesson: a jury verdict finding a patent claim obvious based on a carefully prepared invalidity defense will be difficult to overturn through JMOL or appeal, especially in light of the Supreme Court’s 2007 KSR decision.
1. COMPUTER DRIVE BAY COOLING DEVICE. A patent concerned “a cooling device designed to mount within the drive bay of a computer.” U.S. Pat. No. 5,955,955. USPatNo5955955
a. INCONSISTENT JURY VERDICTS. The jury found that the patent’s independent claims were not invalid but that claims dependent on those claims were invalid for obviousness. The verdicts were inconsistent because a dependent claim is necessarily narrower in scope than a claim upon which it depends.
b. DISTRICT COURT RECONCILIATION: THROW OUT ONE VERDICT? A district court reconciled the inconsistency by finding that there was no substantial evidence supporting the verdicts of obviousness of the dependent claims. That is a proper way to reconcile verdicts, see Mycogen Plant Sci. v. Monsanto Co., 243 F.3d 1316, 1325-26 (Fed. Cir. 2001), but only if, in fact, one of the inconsistent verdicts is not sustainable.
c. SUFFICENT EVIDENCE OF OBVIOUSNESS: EIGHT REFERENCES; EXPERT TESTIMONY ON CLAIM-BY-CLAIM AND LIMITATION-BY-LIMITATION. In this case, the district court erred in finding unsupportable the jury’s obviousness verdict on the dependent claims. At trial, the accused infringer presented to the jury eight prior art references, exhibits of some prior art devices, and expert testimony showing obviousness on a claim-by-claim and limitation-by-limitation basis. Because the jury’s verdicts were irreconcilably inconsistent, a new trial was necessary.
2. ANALOGOUS ART. The district court found that the eight references were not analogous art. This was error. The patent’s “field of endeavor” dealt with “cooling computers and electronic components.” All the references involved “cooling computer electronics using fans to draw cool ambient air,” and were, therefore, in the same field of endeavor and analogous prior art for obviousness purposes.
CROSS-REFERENCES. On the standard of review of jury verdicts on obviousness, see Chisum on Patents 5.04[d][xiv][B]; Chisum Patent Law Digest 1565.
On the independent validity of dependent and independent claims, see Chisum on Patents 8.06[c]; Chisum Patent Law Digest 2462.
On analogous prior art, see Chisum on Patents 5.03[a]; Chisum Patent Law Digest 1512.