Thursday, October 06, 2011

The CAFC finds "jury taint" in Atlantic Research v. Troy

The case of Atlantic Research v. Troy presented a variety of issues:

Atlantic Research appeals from the grant of summary judgment by the United States District Court for the District of Massachusetts invalidating claims 31-36 of U.S. Reissue Patent No. 39,465 (“’465 patent”) for failing to meet the written description and best mode requirements. Because the district court did not err in invalidating these claims on written description grounds, we affirm. We decline to address the best mode issue.

Additionally, Stephen P. Troy, Jr. and Troy Industries, Inc. (collectively, “Troy”) cross-appeal from the district court’s denial of the following motions: Troy’s Motion for Judgment as a Matter of Law regarding state law claims arising from an alleged misappropriation of a trade secret; Troy’s Motion for a Mistrial on the grounds that the court improperly charged the jury and failed to adequately address a jury taint issue; and Troy’s Motion for Remittitur. We affirm the district court’s denial of Troy’s Motion for Judgment as a Matter of Law. But because the district court did not properly address the jury taint issue, we vacate the jury’s verdict and reverse the district court’s denial of Troy’s Motion for a Mistrial. Finally, we decline to address the remittitur issue in light of our decision to vacate the jury verdict.

Of written description:

The written description requirement, set forth in 35 U.S.C. § 112, ¶ 1, states: “The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art . . . to make and use the same.” An adequate written description “reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). “[T]he hallmark of written description is disclo- sure.” Id. The specification “must describe an invention understandable to [a] skilled artisan and show that the inventor actually invented the invention claimed.” Id. “The purpose of the written description requirement is to ensure that the scope of the right to exclude, as set forth in the claims, does not overreach the scope of the inven- tor’s contribution to the field of art as described in the patent specification.” In re Katz Interactive Call Process- ing Patent Litig., 639 F.3d 1303, 1319 (Fed. Cir. 2011) (internal quotation marks omitted).


Now, however, having lost on written description grounds, Atlantic Research argues for a construction that precludes the barrel nut-only attachment design. We view such tactics with “extreme disfavor.” See N. Telecom Ltd. v. Samsung Elecs. Co., 215 F.3d 1281, 1290 (Fed. Cir. 2000) (“[W]e look with extreme disfavor on appeals that allege error in claim constructions that were advocated below by the very party now challenging them.” (internal quotation marks omitted)). While we do not address whether Atlantic Research is judicially estopped from asserting contradictory claim construction arguments on appeal, we note that these inconsistencies undermine Atlantic Research’s current claim construction argument.


we hold that the district court properly granted summary judgment invalidating claims 31-36 for failing to satisfy the written description requirement of 35 U.S.C. § 112. Mr. Swan used the reissue process to impermissibly obtain claims unsupported by the written description. Our holding and the analysis used to reach it are consistent with this court’s precedent. See, e.g., ICU Med., Inc. v. Alaris Med. Sys., Inc., 558 F.3d 1368, 1376-1380 (Fed. Cir. 2009).

Of the trade secret component of the case:

Atlantic Research’s trade secret claims are a matter of Massachusetts state law, and we therefore apply that law in reviewing the district court’s decision. See Ultimax Cement Mfg. Corp. v. CTS Cement Mfg. Corp., 587 F.3d 1339, 1355 (Fed. Cir. 2009).


The range of what may be considered a trade secret is broad. The focus is whether what is claimed as the trade secret is in fact secret. See Jet Spray Cooler, Inc. v. Crampton, 282 N.E.2d 921, 925 (Mass. 1972).

The CAFC makes clear that trade secrets are distinct from patents:

Troy next contends that the “concept” of clamping a handguard to a gun at the barrel nut cannot be a trade secret because the ’245 patent discloses this type of de- vice. A trade secret is secret. A patent is not. That which is disclosed in a patent cannot be a trade secret. See, e.g., On-line Techs., Inc. v. Bodenseewerk Perkin- Elmer GMBH, 386 F.3d 1133, 1141 (Fed. Cir. 2004); Prescott v. Morton Int’l, Inc., 769 F. Supp. 404, 406 (D. Mass. 1990) (applying Massachusetts law). Indeed, Troy argues that the district court actually adopted Troy’s position as its own at a pretrial hearing.

Of the jury verdicts:

Following the jury’s verdict, Troy moved for a mistrial on two grounds. The district court denied the motion, and Troy renews its arguments on appeal. First, Troy con- tends that the district court erred as a matter of law by giving two improper Allen charges, named for Allen v. United States, 164 U.S. 492 (1896), and improperly coerced the jury to reach a unanimous verdict. Second, Troy contends that the district court failed to properly investigate and remedy the possibility of jury taint due to the presence of extraneous evidence in the jury room during deliberations.

Of jury taint:

When a “colorable claim of jury taint surfaces during jury deliberations, the trial court has a duty to investigate the allegation promptly.” United States v. Bradshaw, 281 F.3d 278, 289 (1st Cir. 2002). The court must then “un- dertake an adequate inquiry to determine whether the alleged incident occurred and if so, whether it was preju- dicial.” United States v. Bristol-Martir, 570 F.3d 29, 42 (1st Cir. 2009). If improper evidence was before the jury, the court must determine “whether cognizable prejudice is an inevitable and ineradicable concomitant of that exposure.” Bradshaw, 281 F.3d at 290. The First Circuit has emphasized that “the district court, in conducting its investigation, must ensure that jury members can remain impartial when they have been exposed to extrinsic information that is potentially prejudicial.” Bristol- Martir, 570 F.3d at 43.


Because the district court failed to conduct an adequate investigation into whether the presence of the clamp in the jury room prejudiced members of the jury, we vacate the jury verdict and reverse the district court’s denial of Troy’s motion for a mistrial.
Atlantic Research contends, as an initial matter, that Troy waived any argument concerning jury taint by failing to seek a mistrial “promptly upon learning of the presence of the clamp.” The district court similarly noted that “Troy did not seek a cautionary instruction or imme- diate voir dire.” The problem with this reasoning, though, is that once a “colorable claim of jury taint surfaces” the court has a “duty to investigate the allegation promptly.” Bradshaw, 281 F.3d at 289. The district court was aware of the presence of the clamp in the jury room prior to the issuance of the verdict. The alleged trade secret in this case was the ability to attach a handguard to a weapon using a single-clamp mechanism. The term “clamp” was used repeatedly throughout the trial. Without knowing exactly what the extraneous ‘clamp’ was, the clamp’s “acknowledged presence . . . in the jury room gave rise to a colorable claim of actual prejudice.” Id. Because the district court had notice of the possible prejudice, there could be no “waiver” of the court’s duty to investigate.

The question then becomes “whether the trial court investigated the claim appropriately and resolved it in a satisfactory manner.” Id. The district court failed to take any steps to determine the possible prejudicial effect of the clamp prior to the issuance of the verdict; it never even asked if the jurors could remain impartial after viewing the clamp. By default, the court did not investigate the issue in a “satisfactory manner.” This alone warrants a reversal and a grant of a mistrial.


In the alternative, even when examined from a post- verdict perspective, the district court’s inquiry was still insufficient as a matter of law. The district court denied the motion for a mistrial because it found that the “clamp’s presence did not result in prejudice.” Although it is possible that the clamp did not influence any juror, the district court’s inquiry was insufficient to allow that court to make such a determination. The district court based its decision on the interview with the offending juror weeks after the incident took place. Importantly, at this subsequent interview, the district court only questioned the juror who brought in the clamp. It never sought to question any of the other jurors in more detail. It is the impact of the extraneous evidence on the other jurors, however, that is the most important fact to determine during this inquiry. By failing to conduct an adequate inquiry, the district court abused its discretion.
The deficiency of the district court’s inquiry is evident by looking at another instance of alleged jury taint ad- dressed by the First Circuit. In Bristol-Martir, a drug conspiracy case, the jury foreman informed the court that a juror may have conducted outside legal research and brought that information into the jury room. 570 F.3d at 36-38. After dismissing the offending juror, the court determined that the jury could proceed with deliberations. The First Circuit subsequently vacated the defendants’ conviction, finding that this inquiry was insufficient and an abuse of discretion. Id. at 45. “[C]rucially, the district court did not inquire, either in a group setting or on an individual basis, as to whether jury members had been influenced by the errant juror’s improper research and presentation.” Id. at 43.


The court did not inquire as to its effect on the jurors. While discerning what is and is not permissible under Rule 606(b) is “easier said than done,” Boylan, 898 F.2d at 259, the First Circuit has made clear that the trial court can and should ques- tion the jury “on their ability to render an impartial verdict.” Bradshaw, 281 F.3d at 292; United States v. Hunnewell, 891 F.2d 955, 960 (1st Cir. 1989) (approving of questions where jurors “all emphatically assured con- tinuing impartiality”). This is true whether the court is inquiring before or after the verdict. Boylan, 898 F.2d at 262 (approving the district court’s conclusion regarding the “jurors’ assertions of continued impartiality” in a post- verdict inquiry into jury taint); see also United States v. Lara-Ramirez, 519 F.3d 76, 87 (1st Cir. 2008) (“Although the district court has broad discretion to ‘fashion an appropriate procedure for assessing whether the jury has been exposed to substantively damaging information, and if so, whether cognizable prejudice is an inevitable and ineradicable concomitant’ of the jury’s exposure to an improper outside influence, the judge does not have discre- tion to refuse to conduct any inquiry at all regarding the magnitude of the taint-producing event and the extent of the resulting prejudice.” (emphasis added) (citation omitted)).

The conclusion:

We conclude, therefore, that the district court did not take adequate steps to determine if the presence of the clamp in the jury room had a prejudicial effect on the jury as a whole. This was an abuse of discretion. This court is cognizant of the judicial resources already spent in trying this case. But the law of the First Circuit is clear. Therefore, we must reverse and grant Troy’s Motion for a Mistrial.


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