Comaper Corporation v. Antec, Inc. ( 2013 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
COMAPER CORPORATION,
Plaintiff-Appellant,
v.
ANTEC, INC., BEST BUY CO., INC., AND MICRO
ELECTRONICS, INC.,
Defendants-Appellees.
______________________
2013-1147
______________________
Appeal from the United States District Court for the
Eastern District of Pennsylvania in No. 05-CV-1103,
Judge Petrese B. Tucker.
______________________
Decided: September 6, 2013
______________________
STEPHEN J. DRISCOLL, Saul Ewing, LLP, of Philadel-
phia, Pennsylvania, argued for plaintiff-appellant. Of
counsel was JOSEPH F. POSILLICO, Fox Rothschild, LLP, of
Philadelphia, Pennsylvania.
ROBERT P. ANDRIS, Ropers, Majeski, Kohn & Bentley,
of Redwood City, California, argued for defendants-
appellees. With him on the brief was LAEL D. ANDARA.
______________________
2 COMAPER CORPORATION v. ANTEC, INC.
Before RADER, Chief Judge, CLEVENGER, and MOORE,
Circuit Judges.
RADER, Chief Judge.
After a jury verdict upholding the claims of U.S. Pa-
tent No. 5,955,955 (the ’955 patent), the United States
District Court for the Eastern District of Pennsylvania
granted a JMOL motion rendering some claims invalid as
anticipated. Because the district court erred in conclud-
ing that the jury verdict lacked substantial evidence, this
court reverses and remands.
I.
Comaper Corporation (Comaper) is the owner of
the ’955 patent. Filed in 1994 and issued in 1999, the ’955
patent claims a device to cool a computer’s drive bay
region. See App. 60. The invention is a device inserted
into a drive bay via a slot in the housing of the computer.
Id. In 2005, Comaper filed suit against Antec, Inc. and
others (collectively, Antec), alleging infringement of
the ’955 patent. See Appellant’s Br. 4. Following a trial
in 2007, this court affirmed the district court’s claim
construction and a jury verdict of willful infringement.
Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1347–49
(Fed. Cir. 2010). However, because of an inconsistent
verdict on invalidity (the jury found dependent claims, but
not claims they depended from, to have been obvious),
this court remanded in part. Id. at 1354–55.
In a second trial in 2011, the parties presented evi-
dence only on issues of validity under 35 U.S.C. §§ 102and 103. The jury heard substantial testimony from the
inventor (Mr. Corcoran) and Antec’s two expert witnesses,
a computer collector (Mr. Ismail) and a computer histori-
an (Mr. Bickley). During the week-long trial, Antec
argued that several prior art devices and references
rendered the claims invalid. However, by agreement, only
the invalidity of the two independent claims of the ’955
patent, claims 1 and 12, was submitted to the jury. App.
3. The jury found that Antec did not prove invalidity. Id.COMAPER CORPORATION v. ANTEC, INC. 3
Antec properly moved for JMOL under §§ 102 and
103, relying on four prior art devices. On April 2, 2012,
the district court granted Antec’s motion for JMOL under
§ 102, holding that two prior art devices anticipated both
asserted claims. Comaper Corp. v. Antec, Inc., 867 F.
Supp. 2d 663 (E.D. Pa. 2012); see App. 10–11, 20. The
trial court did not reach § 103. Comaper appeals. This
court has jurisdiction under 28 U.S.C. § 1295(a)(1).
II.
This court reviews claim construction without defer-
ence. See Cybor Corp. v. FAS Techs., 138 F.3d 1448, 1456
(Fed. Cir. 1998) (en banc). In contrast, anticipation is a
question of fact. Rapoport v. Dement, 254 F.3d 1053, 1058
(Fed. Cir. 2001). A prior art device anticipates only if
there is clear and convincing evidence that the prior art
device “disclosed, either expressly or inherently, all the
structural limitations contained in the asserted apparatus
claims.” Old Reliable Wholesale, Inc. v. Cornell Corp., 635
F.3d 539, 545 (Fed. Cir. 2011); see Applied Med. Res.
Corp. v. U.S. Surgical Corp., 147 F.3d 1374, 1380 (Fed.
Cir. 1998) (a prior art device does not anticipate “simply
by possessing identically named parts, unless these parts
also have the same structure or otherwise satisfy the
claim limitations”).
This court reviews a district court’s grant of JMOL
under regional circuit law. Frolow v. Wilson Sporting
Goods Co., 710 F.3d 1303, 1308 (Fed. Cir. 2013). “The
Third Circuit exercises plenary review of the grant of a
motion for JMOL,” and follows the rule that a motion for
JMOL “should be granted only if, viewing the evidence in
the light most favorable to the nonmoving party, there is
no question of material fact for the jury and any verdict
other than the one directed would be erroneous under the
governing law.” Id. (quoting McGreevy v. Stroup, 413
F.3d 359, 363–64 (3d Cir. 2005) (citation omitted)). As
Antec recognizes, in the Third Circuit it “is only in rare
instances that a jury’s verdict in a civil case should be
overturned.” Pitts v. Delaware, 646 F.3d 151, 152 (3d Cir.
4 COMAPER CORPORATION v. ANTEC, INC.
2011). See Appellees’ Br. at 20. Accordingly, this court
can affirm only if, viewing the evidence most favorably to
Comaper, the record shows clear and convincing evidence
of invalidity such that no reasonable jury could find a
claim was not anticipated. For the following reasons, this
court does not discern that clear and convincing evidence
in this record and thus must reverse.
III.
The need to cool computer components is as old as
computers themselves. See Appellees’ Br. 5–7. The ’955
patent describes a cooling device [100] designed to be
inserted through a slot defined in the housing of a com-
puter [150] into its drive bay [151]. See ’955 patent fig. 1.
The asserted claims are not limited to specific types of
computers, but Figure 1 of the ’955 patent gives some
context to the claim language:
Only independent claims 1 and 12 are on appeal.
Claim 1 claims the cooling device alone, and claim 12
claims a computer in combination with the device:
1. A cooling device for a computer, said computer
having a drive bay region with at least one drive
COMAPER CORPORATION v. ANTEC, INC. 5
bay slot adapted to receive[] said device
com[p]rising:
a case configured to mount within said
drive bay slot of said computer such that
said case occupies substantially the entire
drive bay slot, said case having at least a
first opening [shown as wavy slots in
[100]] and at least a second opening, when
mounted within said drive bay, said first
opening being exposed to ambient air and
said second opening being within said
drive bay region of said computer;
at least one air movement device mounted
within said case, said air movement device
being configured in one of two ways, a first
way in which said air movement device
draws cooling air through said first open-
ing and exhausts substantially all of said
cooling air from said case though said sec-
ond opening into said drive bay region, a
second way in which said air movement
device draws air into said case through
said second opening from and [sic] drive
bay region and exhausts it through said
first opening; and
power supply means for supplying power
to said air movement device.
12. In a computer having a drive bay region with
at least one drive bay slot adapted to receive a
drive, an improvement comprising:
a case mounted within said drive bay slot
of said computer such that said case occu-
pies substantially the entire drive bay
slot, said case have [sic] at least a first
opening and at least a second opening,
said first opening being exposed to ambi-
ent air and said second opening being
6 COMAPER CORPORATION v. ANTEC, INC.
within said drive bay region of said com-
puter;
at least one air movement device mounted
within said case, said air movement device
being configured in one of two ways, a first
way in which said air movement device
draws cooling air from said first opening
and exhausts substantially all of said cool-
ing air th[r]ough said case th[r]ough said
second opening into said drive bay region,
a second way in which said air movement
device draws air into said case through
said second opening from said drive bay
region and exhausts it through said first
opening; and
power supply means for supplying power
to said air movement device.
In the prior appeal, this court affirmed the district
court’s construction of several terms. One of these con-
structions is dispositive of all issues here: this court held
that “drive bay slot” means “the relatively narrow opening
in the housing of the computer that leads to the drive
bay.” Comaper, 596 F.3d at 1349.
Despite this interpretation, the district court held in
the JMOL order now on appeal that no reasonable jury
could find that the asserted claims were not anticipated
by two prior art 19-inch rack-mounted drive bay modules.
Those two rack mounts for computer resources were
known at trial as the “Fujitsu device” and the “CDC Nova
3 Mini Module Device.” See Appellees’ Br. 13, 15. Alt-
hough in the 1980s the standard in personal computers
(PC) was for PCs to use disk drives that were about 5.25
inches wide, some computer systems used separate mod-
ules (hard drives, tape drives, processors, etc.) mounted in
“racks.” See Appellant’s Br. 9. “Racks” are frames, or
computer cabinets, with some electrical structure that can
hold computing equipment designed for stacking on racks.
COMAPER CORPORATION v. ANTEC, INC. 7
Id.; see Appellees’ Br. 6–7. In the prior appeal, this court
held that rack-mounted systems were analogous art.
Comaper, 596 F.3d at 1351.
In its JMOL opinion, the district court perceived only
one difference between each asserted claim and the CDC
Nova 3 Mini Module Device and Fujitsu devices: “the size
of the devices.” App. 18. It reasoned that because the size
of the device was “a specification not found anywhere in
the ’955 patent itself, nor in [the district court’s] claim
construction,” this difference did not preclude a finding of
anticipation. Id. For that reason, the district court held
each device anticipated. Id.In light of the prior claim construction and the record
in this proceeding, this court disagrees. While the claims
do not recite the size of the device or computer, the rela-
tive size of the drive bay slot does matter in terms of the
claim language, context, and meaning. The record, in-
cluding photographs and testimony from Mr. Corcoran,
shows that both prior art devices fit into an opening
which extended virtually the entire width of the rack. See
Appellees’ Br. 20; Appellant’s Br. 26, 30–31. Thus, nei-
ther prior art device had a relatively narrow opening in
the housing of the computer. On that basis alone, sub-
stantial evidence supports the jury’s factual finding of a
difference between the claimed invention and the prior
art. The difference would preclude anticipation and
support the jury verdict. Although there are other differ-
ences between each of these two devices and each properly
construed claim, this difference alone makes the grant of
JMOL incorrect.
IV.
As alternate bases to affirm, Antec argues that two
other devices it identified in its JMOL motion anticipate
each claim. Further, Antec asserts that the jury verdict
rejecting its obviousness defense lacked substantial
evidence. This court disagrees.
8 COMAPER CORPORATION v. ANTEC, INC.
The third device Antec asserts as anticipatory is the
PCC2000, a 19-inch wide extraction fan designed for rack-
mounting. See App. 1563. The evidence showed, howev-
er, that prior to the critical date, this device had been
affixed to the rear of rack systems containing only modu-
lar hard drives. See Appellant’s Br. 15, 32. For that
reason alone, ample evidence supports the jury verdict
that this device does not anticipate claim 12, because the
record contains no evidence that the prior art device was
ever mounted within the drive bay slot of a “computer.”
See Appellant’s Br. 32. With respect to both asserted
claims, for the same reasons as with the first two devices,
the record shows that the extraction fan was not config-
ured to mount in the relatively narrow opening of a drive
bay slot. Thus, this court cannot affirm on this alternate
ground.
The fourth device Antec asserts as anticipatory is the
AS/400 device. See Appellees’ Br. 17. The jury’s finding
that this device did not anticipate either independent
claim is amply supported by the record, since the housing
of the AS/400 has no “slot” in it, and thus lacks a drive
bay slot. See App. 1547. Instead, the module is behind a
solid computer housing that lacks any slots. Further,
even with the housing removed, a metal grate with no slot
covers the module. For these and other reasons, this
court cannot affirm on this alternate basis.
Finally, this court rejects Antec’s argument that the
record supports granting JMOL of obviousness by this
court on appeal. The record shows again that the jury
verdict of nonobviousness has ample support. Among
other things, the verdict finds support in the clear differ-
ences between each claim and the prior art along with
testimony about the lack of motivation to combine, the
discovery of the specific problem, objective criteria, and
other facts. See Appellant’s Br. 41–43. Antec has not
shown that, viewing the evidence favorably to Comaper,
any aspect of the jury verdict lacked substantial evidence.
COMAPER CORPORATION v. ANTEC, INC. 9
Thus, this court remands with instructions to enter a
final judgment for Comaper according to the jury verdict.
REVERSED AND REMANDED