Richard R. Vieau and Robert A. Vieau v. Japax, Inc., Japax Scientific Corporation, and Textron, Inc., Defendants/cross ( 1987 )

BALDWIN, Senior 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.

Background

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 mov-ably 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.

Procedural History

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.

Issues on Appeal

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 issue² 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 non-infringement, we need not address any issues relating to validity, damages, and willful infringement. We deny Japax’s request for double costs and attorney fees.

Discussion

I.

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), “[district courts have broad authority and discretion in controlling the conduct of a trial. That authority extends to the form by which juries return verdicts, Fed.R.Civ.P. 49, and will not be interfered with unless an abuse of discretion is shown.” See American Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1361, 220 USPQ 763, 771 (Fed.Cir.1984) (special interrogatories in patent cases facilitate appellate review and avoid unnecessary remand for retrial).

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 Railroad Dynamics, 727 F.2d at 1516, 220 USPQ at 939 (approving challenged interrogatories which, although not literally complying with the language of either section (a) or (b) of Rule 49, allowed the jury to speak specifically with respect to each defense to the benefit of the court and the parties); see also Connell, 722 F.2d at 1547, 220 USPQ at 197 (submission of a question of law to a jury, together with appropriate instructions on the law from the trial judge, is not error).

Nevertheless, the benefit of the interrogatories was not fully realized in this case because, as the district court found, the jury’s answers to the special questions relating to infringement were inconsistent with the corresponding general verdict. The jury’s answers to special questions 7-9 found that the claims of the Yieau patent called for “plurality of separate, individually operable” tension devices, cutting guide assemblies, and take-up assemblies.³ The jury found in questions 44-46 (covering the LM-30-5) and questions 49-51 (covering the LM-40-3) that the Japax machines each had a single tension assembly, cutting guide assembly, and take-up assembly as opposed to assemblies individually operable for each wire.⁴ The jury’s findings that the claims covered a plurality of separately operable devices while the Japax devices operated as a single assembly with one set of controls were consistent with a finding of noninfringement. However, despite these findings, the jury also found that both Japax devices infringed claims 1 and 5 of the Vieau patent.

“When the answers are consistent with each other but one or more is inconsistent with the general verdict, judgment may be entered pursuant to Rule 58 in accordance with the answers, notwithstanding the general verdict_” Fed.R.Civ.P. 49(b). Although noting that the jury’s answers to questions 7-9 and to questions 44-46 and 49-51 were inconsistent with its finding of infringement, the judge did not enter JNOV on the issue of infringement on the basis of that inconsistency. Rather, the judge ruled (1) that the jury’s findings that the Vieau patent claimed a plurality of separate, individually operable devices were not supported by substantial evidence, and (2) that the jury’s findings that the Japax devices had only single assemblies were also not supported by substantial evidence. Since these rulings still meant that the claims and the accused devices did not either both contain a plurality of separate devices or both contain single assemblies, the district court concluded that reasonable persons could not have reached a verdict in favor of Vieau on infringement and granted JNOV.

Our initial task in the present case is to determine if the jury’s answers to the special questions can stand, applying proper JNOV standards. Only after that review has been completed do we determine whether there remains an inconsistency between the special questions and the general verdict which would require application of Rule 49(b).

In Connell, this court discussed guidelines pertinent to consideration of motions for directed verdict and for judgment notwithstanding the verdict:

[A] court must: (1) consider all the evidence; (2) in a light most favorable to the non-mover; (3) drawing reasonable inferences favorable to the non-mover; (4) without determining credibility of witnesses, and (5) without substituting its choice for that of the jury between conflicting elements in the evidence. The court should not be guided by its view of which side has the better case or by what it would have done had it been serving on the jury. If, after following those guidelines, the court is convinced upon the record before the jury that reasonable persons could not reach or could not have reached a verdict for the non-mover, it should grant the motion for directed verdict or JNOV.

722 F.2d at 1546, 220 USPQ at 197. However, Connell also noted that “[djeference due a jury’s fact findings in a civil case is not so great, however, as to require acceptance of findings where * * * those findings are clearly and unquestionably not supported by the substantial evidence.” Id.

Thus, the burden on one who appeals the grant of a motion for JNOV, as occurred here, is to show that the jury’s factual findings were supported by at least substantial evidence and the legal conclusions made by the jury can be supported by those findings. See Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 893, 221 USPQ 669, 673 (Fed.Cir.), cert. denied, 469 U.S. 857, 105 S.Ct. 187, 83 L.Ed.2d 120 (1984). “ ‘Substantial’ evidence is such relevant evidence from the record taken as a whole as might be accepted by a reasonable mind as adequate to support the finding under review.” Id.

II.

In determining patent infringement, two inquiries are involved. The first inquiry, interpreting the meaning of the claims, is a question of law. The second inquiry, whether the properly interpreted claims encompass the accused device, is a question of fact. McGill Inc. v. John Zink Co., 736 F.2d 666, 671, 221 USPQ 944, 948 (Fed.Cir.), cert. denied, 469 U.S. 1037, 105 S.Ct. 514, 83 L.Ed.2d 404 (1984).

Japax argues on appeal that the accused devices do not infringe because they are, essentially, several single-wire machines strung together. That is, for a separate strand of wire, each Japax device has a separate, individually operable tension controller, cutting guide assembly, and take-up assembly. On the other hand, Japax argues, the Vieau patent claims cover only a device with single assemblies and a single set of controls, regardless of the number of wires. Thus, for the purposes of this appeal, Japax argues that the jury's claim interpretation reflected in its answers to questions 7-9 (that the claims cover a device with separately operable wires) was not supported by substantial evidence, and that there is not substantial evidence to support the jury's responses to questions 44-46 and 49-51 (that the accused devices contain only single assemblies), so that the JNOV with respect to those questions was proper.

Vieau, in its principal brief, argues that the jury's findings that the Japax devices each contained a single tension assembly, a single cutting guide assembly, and a single take-up assembly were supported by substantial evidence. Thus, Vieau argues that the jury's responses to questions 44-46 and 49-51 (that the accused devices have single assemblies) are supported by substantial evidence, but does not contest the JNOV with respect to questions 7-9. Then, in its reply brief, Vieau argues that the jury's responses to questions 7-9 (that the claims cover a device with separately operable wires) are supported by substantial evidence and that the claims interpreted to cover a "plurality of individual devices" lead to a finding of infringement by the Japax devices. It seems, therefore, that Vieau adopts one claim definition in its principal brief and a different one in its reply brief.

The key issue here is the meaning of "assembly" in the claims-does it mean a device in which all wires are operated by one set of controls or a device with a plurality of individually operable wires? When the language of a claim is disputed, it is proper to turn to other evidence introduced at trial. See Moeller v. Ionetics, 794 F.2d 653, 656, 229 USPQ 992, 994 (Fed.Cir.1986).

The specification discloses an EDM machine which has been improved by adding a multiple wire feed. The wires are routed through a tension assembly, a cutting guide assembly, and a take-up assembly. These wires are pulled through the various assemblies by an electric motor that runs a single take-up spool. The hardware guiding each wire is disclosed to be identical so that substantially the same tension is maintained on each wire. Tension for the wires is adjustable by a single control knob in much the same manner as tension on a sewing machine. One of the inventors testified that the only way to "turn off" one wire on the machine disclosed by the Vieau patent is to remove the wire. That evidence supports interpreting "assembly" as used in the claims to cover only a device with unitary controls.

The jury, however, found the term "assembly" to mean a plurality of separate, individually operable devices, each working on a separate wire. To support that, Vieau relies on The Compact Edition of the Oxford English Dictionary definition ("a collection of things") and contends that the record, in conjunction with the dictionary definition, supports the jury's conclusion. We cannot agree. The trial court properly noted that there is nothing in the claims or specification that would indicate the wires are individually controlled since at least the cutting guide and take-up assemblies receive and control the wires as a group. We determine, as we must in a JNOV context, that no reasonable juror could have concluded that "assembly" covers separate devices. We agree with the district court in that regard, and must reject the jury's responses to questions 7-9.

We also reject the jury's responses to questions 44-46 and 49-51, i.e., that the accused devices contain unitary controls. To support the jury responses, Vieau contends that the jury finding that the Japax LM-40-3 and LM-30-5 have one tension cutting guide and take-up assembly is supported by substantial evidence because one of the appellants had so testified. However, as Japax points out, that "support" is tenuous at best. It is contradicted by other testimony by the same witness and otherwise does not rise to the level of substantial evidence necessary to enable Vieau to meet its burden on appeal. See Connell, 722 F.2d at 1546, 220 USPQ at 197. The Japax devices clearly contain an individually operable tension device, an individually operable cutting guide assembly, and an individually operable take-up assembly for each separate wire. Therefore, we conclude that there is not substantial evidence to support the jury answers to questions 44-46 and 49-51. Since the jury verdict of infringement is inconsistent with (1) the Vieau claims covering only unitary devices, and (2) the Japax machines having multiple separate assemblies, we hold that the grant of Japax’s motion for JNOV on the issue of infringement was proper. Fed.R.Civ.P. 49(b).

Remaining Issues

Vieau calls this court’s attention to the letter quoted in part by the district court as support for the grant of JNOV on the infringement issue. As the district court itself pointed out when discussing the letter, the letter was not introduced until the second phase of the trial covering damages and willful infringement. Vieau contends that the use of the letter, which contains an interpretation of the word “assembly” as used in the Vieau patent specification, was error. However, Vieau makes no effort to show that the district court’s use of the letter materially influenced the court’s decision. Apart from the letter in question, the record more than adequately supports the district court’s conclusions, including its findings on the interpretation of the word “assembly” and its findings on the conflict between the special questions and the verdict. Vieau has not met its burden on appeal to show that any error resulting from the district court’s use of the letter was harmful. See, e.g., Cable Electric Products, Inc. v. Genmark, Inc., 770 F.2d 1015, 1021-22, 226 USPQ 881, 884 (Fed.Cir.1985).

Finally, Japax requests an award of double costs and attorney fees on the grounds that Vieau’s appeal is frivolous. There is a difference between advancing a losing argument and prosecuting a frivolous appeal. In this case, the jury made some conflicting findings. The judge entered a verdict contrary to some of those findings. On these facts we cannot say that Vieau’s appeal from the district court’s decision was frivolous and the request for double costs and attorney fees is denied. Orthopedic Equipment Co. v. All Orthopedic Appliances, 707 F.2d 1376, 1384, 217 USPQ 1281, 1287 (Fed.Cir.1983) (“award of attorney fees is within discretion of trial judge”); see also Reactive Metals Alloys Corp. v. ESM, Inc., 769 F.2d 1578, 1582-83, 227 USPQ 821, 824 (Fed.Cir.1985).

Conclusion

Our disposition on the issue of infringement renders moot the appeal of the propriety of a directed verdict on the issues of damages and willful infringement. There is no indication that Japax’s cross-appeal on invalidity extends beyond the litigated claims or the accused devices found to be noninfringing. Accordingly, we also dismiss the cross-appeal as moot. The judgment entered by the district court with respect to each of the mooted issues is therefore vacated. It is affirmed with respect to infringement.

AFFIRMED-IN-PART and VACATED-IN-PART

1 . The first 8 "Verdict" questions asked whether the defendants had proved by clear and convincing evidence:

(a) that claims 1, 3, and 5 of the patent had been proved invalid for anticipation (3 questions);

(b) that claims 1, 3, and 5 of the patent had been proved invalid for obviousness (3 questions);

(c) that the patent was invalid for failure to disclose best mode (1 question); or

(d) that the patent was unenforceable for inequitable conduct (1 question).

The remaining 6 "Verdict” questions asked whether the plaintiffs had proved by a preponderance of the evidence:

(e) that claim 1, 3, or 5 had been infringed by the LM-30-5 machine (3 questions); or

(f) that claim 1, 3, or 5 had been infringed by the LM-40-3 machine (3 questions).

2 . The court had denied Japax’s JNOV motion on the issues of anticipation, obviousness, and un-enforceability. Japax did not appeal the denial of JNOV on anticipation and unenforceability.

3 . The jury answered "yes" to each of the following interrogatories:

7. Did the plaintiffs, at the time they filed their patent application, define the term "tension assembly" to mean a plurality of separate, individually operable tension devices, each providing tension for a separate wire?

8. Did the plaintiffs, at the time they filed their patent application, define the term "cutting guide assembly” to mean a plurality of separate, individually operable cutting guide assemblies each guiding a separate wire?

9. Did the plaintiffs, at the time they filed their patent application, define the term “take-up assembly" to mean a plurality of separate, individually operable take-up devices each for taking up a separate wire?

4 . The jury answered “one” to each of the following interrogatories:

44. Does the Japax LM-30-5 machine have a tension assembly receiving each of the wires or five individually operable tension assemblies each receiving one wire?

45. Does the Japax LM-30-5 machine have a cutting guide assembly receiving each of the wires or five individually operable cutting guide assemblies each receiving one wire?

46. Does the Japax LM-30-5 have a take-up assembly or five individually operable take-up assemblies?

The jury also answered "one” to similar questions (interrogatories 49-51) asked in regard to the Japax LM-40-3 machine.