PROST, Circuit Judge.
This is a patent infringement case. Defendant Ford Motor Company ("Ford") appeals
This case's lengthy history began in February 1989, when Jacob Krippelz, Sr., now deceased, filed for a patent on a vehicle-mounted lamp.
Id. fig. 1. As described by Mr. Krippelz, the lamp was for use in inclement weather like rain or fog. Its light would reflect off water, dust, or other airborne particles so as to be visible to other drivers, but not interfere with either their vision or that of the person driving the car. See generally id. col.1.
Mr. Krippelz's patent issued in 1991. He says he sent a copy of it to Ford shortly thereafter, but that Ford was not interested in taking a license. For a period of years, nothing happened.
Then, in 1997, Ford began offering a new option on its Explorer and other model automobiles, which we will refer to as a "puddle light." The puddle light was a lamp, attached to the vehicle's side view mirror, that shone light generally downward. Ford's puddle light was equipped with a lens that diffused the light in such a way as to illuminate the vehicle's side.
Mr. Krippelz viewed the puddle light as infringing, and in 1998 he sued. Complaint, Krippelz v. Ford Motor Co., No. 98-CV-2361 [hereinafter Krippelz] (N.D.Ill. Apr. 16, 1998), ECF No. 1. The case revolved around claim 2 of the '903 patent, which reads:
'903 patent col.3 l.19-col.4 l.3.
About a year after filing the complaint, Mr. Krippelz asked the Patent and Trademark Office ("PTO") to reexamine the '903 patent. An Information Disclosure Statement accompanying the request acknowledged the ongoing litigation, noted that Ford had raised invalidity as a defense, and attached "all the references Ford has identified to the Requestor during the litigation." See Info. Disclosure Stmt. (Aug. 30, 1999), at 2, '903 Reexam. File Hist., J.A. 12516, 12517. The PTO instituted reexamination proceedings and subsequently confirmed the validity of all the '903 patent's claims over the submitted prior art. See generally Reexam. Certificate, U.S. Patent No. 5,017,903 C1 (issued Aug. 13, 2002). As part of the reexamination process, new claims were also added to the '903 patent, which Mr. Krippelz states were subsequently asserted against Ford in separate litigation. Those claims are not part of this appeal.
Over the next several years, the district court handled a number of summary judgment and claim construction issues which we will not recount except to state that there was much dispute about the appropriate manner in which to analyze Ford's puddle lights for infringement. For our purposes, we note that in 2008 Mr. Krippelz moved for summary judgment of infringement, which the court granted from the bench.
Infringement having been summarily addressed, the case proceeded to trial on validity and damages. Ford argued that claim 2 was anticipated, or at least rendered obvious, by French Patent No. 1,031,294 (trans.) (published June 22, 1953), J.A. 13430, to DuBois [hereinafter DuBois]. DuBois, which did not appear in the '903 patent prosecution history, taught a "system of lamps and optical devices" for illuminating the pavement next to a vehicle. The idea was to give other drivers a clear view of the vehicle's side and the adjacent area so that they could know if there was enough room to pass. DuBois, J.A. 13431. Ford argued that DuBois taught all the limitations of claim 2. Mr. Krippelz presented opinion testimony from an expert that DuBois failed to teach two limitations, namely a "conical beam of light" and a lamp located "adjacent" to the vehicle window.
The jury returned its verdict for Mr. Krippelz. It found the '903 patent valid over DuBois, and awarded $23 million in damages for Ford's infringement. Jury Verdict, Krippelz (N.D.Ill.Dec. 12, 2008), ECF No. 429. Following a bench trial on willfulness, the court found Ford's infringement
Ford moved for judgment of invalidity as a matter of law; its motion was denied. Krippelz, 750 F.Supp.2d 938 (N.D.Ill.2010) [hereinafter JMOL Op.]. Ford timely appealed. This court has jurisdiction under 28 U.S.C. § 1295(a)(1).
We hold that the district court committed reversible error in denying JMOL of invalidity by anticipation over DuBois, and so reverse. This court reviews denial of a motion for JMOL under the law of the pertinent regional circuit, here the Seventh. Seachange Int'l, Inc. v. C-COR Inc., 413 F.3d 1361, 1367-68 (Fed. Cir.2005). In that circuit, an appellate court's inquiry into the denial of a JMOL motion is "limited to the question whether the evidence presented, combined with all reasonable inferences permissibly drawn therefrom, is sufficient to support the verdict when viewed in the light most favorable to the party against whom the motion is directed." Campbell v. Miller, 499 F.3d 711, 716 (7th Cir.2007) (internal quotation marks omitted). Such review is de novo. Waters v. City of Chicago, 580 F.3d 575, 580 (7th Cir.2009). Reversal is warranted only if no reasonable juror could have found for the nonmoving party. Id. To show that a patent claim is invalid as anticipated, the accused infringer must show by clear and convincing evidence that a single prior art reference discloses each and every element of a claimed invention. Silicon Graphics, Inc. v. ATI Techs., Inc., 607 F.3d 784, 796 (Fed.Cir.2010).
In this case, the district court supported its denial of JMOL with two potential grounds on which a jury could find for Mr. Krippelz. First, the court held that a reasonable jury could find that DuBois failed to teach the required "conical beam of light." Second, the court held that a reasonable jury could find that DuBois lacked the required lamp "adjacent to the window." See JMOL Op., 750 F.Supp.2d at 943-46. We reject both grounds as unsupported by the evidence.
We turn first to the "conical beam of light." The trial court construed this term to mean "a beam of light that diverges," and it construed "beam of light" to mean "light that both is directed and has a defined sweep range." Id. at 944. We see no error in these constructions, and the parties do not contest them per se. However, the district court made further statements concerning the interpretation of these terms that require a detailed look at the '903 patent's intrinsic evidence. See Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed.Cir.2005) (en banc).
When instructing the jury, the district court stated that proving the presence of "directed" light—which was a prerequisite to showing a "conical beam of light"— required proof that "the filament of the light bulb is at or near the focal point of an optical reflector." Trial Tr. 961:16-18, J.A. 9597. It further told the jury that "parabolic and elliptical reflectors are types of optical reflectors." Id. at 961:18-19, J.A. 9597. These statements correctly interpreted claim 2's requirements.
'903 patent col.2 ll.19-37 (emphases added). The '903 patent description thus includes no reference to the focal points of a reflector, or to the reflector's shape as elliptical or parabolic. Similarly, the prosecution history of the '903 patent on initial examination is bereft of such discussion. Were we to consider the '903 patent's specification and initial prosecution history alone, then, we would find it difficult to affirm the district court's holding that the term "beam of light" incorporates requirements concerning the shape and focal point of the reflector.
But references to such requirements emerged while the '903 patent was under reexamination at the PTO. A patentee's statements during reexamination can be considered during claim construction, in keeping with the doctrine of prosecution disclaimer. Am. Piledriving Equip., Inc. v. Geoquip, Inc., 637 F.3d 1324, 1336 (Fed. Cir.2011).
During reexamination, the Examiner rejected claim 2 as obvious over two references, "Kim" and "Matsuda."
Mr. Krippelz submitted a declaration from Dr. Richard Hansler—the same expert who Mr. Krippelz would subsequently call to testify at trial in this case and
In response, the Examiner maintained his position that the claim was obvious. Mr. Krippelz's reply repeated his belief that the combination failed to teach the required "beam of light," and continued to focus on Kim. He submitted further quotations from Dr. Hansler's declaration:
Krippelz Appeal Reply Br. (Apr. 2, 2001), at 8, '903 Reexam. File Hist.
As mentioned above, the Board subsequently reversed the Examiner and confirmed the patentability of claim 2. Ex parte Krippelz, No. 2001-1441, slip op., J.A. 13073 (B.P.A.I. Feb. 25, 2002).
Mr. Krippelz's statements are of course now part of the intrinsic record. Taking them into account, we agree with the district court that the term "conical beam of light," as used in the '903 patent and in light of Mr. Krippelz's arguments during reexamination, incorporates limitations as to the shape of the reflector and the positioning of the light source relative to it. As a result of these statements, As a result of these statements, Mr. Krippelz disclaimed lamps lacking these limitations, and the limitations therefore became part of the properly construed claims. As the district court properly concluded, Mr. Krippelz's claimed invention thus requires (1) a reflector having a focal point, such as a parabolic or elliptical reflector, and (2) positioning of the light source at or near the reflector's focal point. We therefore affirm the district court's construction of "conical beam of light."
Having determined that the district court properly construed the claim, we nevertheless find reversible error in its holding that a reasonable jury could find that DuBois lacked the required disclosure. DuBois expressly teaches that, with respect to the Figure 17 diagram, its lamp could "include a bulb 27 at the focus of a reflector 28 [,] the shell of which includes a prolongation 29 forming a screen to prevent the light rays from directly striking the eyes of a driver or pedestrian positioned in front of or behind the vehicle." DuBois (trans.) at 2, J.A. 13432 (emphasis added). This language expressly satisfies the requirement of a light beam that is both directed and that is generated by a bulb-reflector combination in which the bulb is located at the focal point of the reflector. DuBois further teaches that its light could be a "headlight," which dovetails neatly with Mr. Krippelz's express acknowledgement that, in the bulb-reflector combination producing the required light beam, "The reflector element can be part of the light bulb, as in a spot light type of lamp bulb." See Krippelz Reexam. Appeal Br. at 3.
In denying JMOL, the district court cited several varieties of evidence to overcome these disclosures in DuBois. But that evidence, whether viewed separately or collectively, was legally insufficient to support a judgment for Krippelz.
This court has repeatedly cautioned against overreliance on drawings that are neither expressly to scale nor linked to quantitative values in the specification. See Nystrom v. TREX Co., 424 F.3d 1136, 1149 (Fed.Cir.2005); Hockerson-Halberstadt, Inc. v. Avia Grp. Int'l, Inc., 222 F.3d 951, 956 (Fed.Cir.2000); In re Wright, 569 F.2d 1124, 1127 (CCPA 1977). However, Ford does not appeal, and so we do not take up, the trial court's denial of Ford's motion to exclude Dr. Hansler's ray trace diagrams. See Tr. of Dec. 8, 2008 Proceedings, at 39:19-22, J.A. 8349, 8387. In light of Ford's decision to not appeal the admission of this evidence, it was properly before the jury. On the basis of Dr. Hansler's testimony, we cannot say that no reasonable jury could have concluded that Figure 17's disclosure was not anticipating.
Nevertheless, it was reversible error for the district court to hold the jury's verdict sustainable on this testimony because Figure 17 depicts just one embodiment of the DuBois invention. DuBois expressly states that other embodiments could use lamps in addition to the one disclosed in its figures, including "a headlight, parking light, or other body light." DuBois at 2, J.A. 13432. The evidence at trial—including testimony from Dr. Hansler himself— was that a headlight (as that word was used in DuBois) creates a "beam of light." Trial Tr. 531:25-532:2, J.A. 9033-34. Dr. Hansler's "ray trace" diagrams of figure 17 notwithstanding, there is no question that DuBois's disclosure of a "headlight" teaches the required "beam of light."
Dr. Hansler also opined to the jury that any beam in DuBois, even if it was a beam, did not anticipate because it was not necessarily "conical." He pointed to DuBois's discussion of "lighting the pavement obliquely on the surface of a rectangle" adjacent to the vehicle. JMOL Op., 750 F.Supp.2d at 945; see also DuBois (trans.) at 2, J.A. 13432. Dr. Hansler testified that it is "not possible" for a conical beam of light to illuminate a rectangle. Trial Tr. 555:14-19, J.A. 9957. While expressing some skepticism about this reasoning, the district court nevertheless held that a jury could reasonably agree with it.
We disagree as a matter of law. While DuBois discusses illuminating the area within a rectangle on the pavement next to the car, nowhere does it require that such illumination be only with non-conical light beams. Indeed, many figures in DuBois depict triangles of light extending from various lamps to the surface of the ground. There is no language in DuBois disavowing the most natural interpretation of those triangles, i.e., as two-dimensional depictions of light cones. Further, there are numerous disclosures in DuBois of using multiple lamps to illuminate the target area. This undermines Dr. Hansler's testimony that "[a] conical beam of light such as one gets from a flashlight would not be capable of illuminating a large area." Trial Tr. 512:20-24, J.A. 9014. Taken as a whole, Dr. Hansler's testimony that the "conical" limitation was unsatisfied failed
Finally, the court cited testimony from Mr. Krippelz's expert that a conical beam of light "probably wouldn't be a very effective way to accomplish the purpose of DuBois," and from that reasoned that the jury could reasonably have held that DuBois "actually teaches away from using a beam." JMOL Op., 750 F.Supp.2d at 945-46. First and foremost, teaching away is not relevant to an anticipation analysis; it is only a component of an obviousness analysis. Celeritas Techs., Ltd. v. Rockwell Int'l Corp., 150 F.3d 1354, 1361 (Fed. Cir.1998). Secondly, the opinions of Dr. Hansler are not a substitute for the actual DuBois disclosure. When all elements of the device are shown in a single prior art reference, as here, the question of "teaching away" does not arise.
We thus conclude that the district court committed clear error in denying JMOL on the basis of DuBois's putative failure to disclose the required "conical beam of light."
The court's holding that the jury could have reasonably found DuBois to lack a lamp "adjacent to the window" was also reversible error. Figures 5 and 6 of DuBois plainly show such a lamp:
DuBois (trans.) figs. 5, 6, J.A. 13435. The district court again quoted Dr. Hansler, who "testified that while in one illustrated position the device `might be' adjacent, `it certainly is not clearly adjacent to a side window.'" JMOL Op., 750 F.Supp.2d at 944 (emphasis added). As already mentioned, the conclusory testimony of an expert witness, however, cannot create an issue of fact if none otherwise exists. Sitrick, 516 F.3d at 1001. There is no question that a person of ordinary skill, reviewing these figures, would understand them to show mounting the lamp adjacent to the side window.
We therefore conclude that the district court erred in denying Ford's motion for JMOL of invalidity.
Because claim 2 of the '903 patent is invalid, we need not reach the other issues put forward by the parties, i.e., the district court's summary judgment of infringement and its willfulness analysis. Those decisions are now moot and as such are vacated.
We therefore reverse the district court's denial of JMOL of invalidity, vacate its summary judgment of infringement and its willfulness analysis, and remand for entry of judgment of non-liability for Ford.