Tuesday, August 23, 2016

Garlock prevails at the CAFC in Smith case, 2015-1758. WD Missouri reversed.

Garlock won a reversal of a decision by the Western District of Missouri:

This appeal arises from a jury verdict finding Garlock
Equipment Company (“Garlock”) liable for infringement
of the asserted claims of U.S. Patent No. 8,240,431 (the
“’431 Patent”), and awarding damages for lost profits and
reasonable royalties. Garlock moved for judgment as a
matter of law on both findings. The district court denied
Garlock’s motions and proceeded to issue an injunction
prohibiting infringing activities involving the accused
products. Garlock now appeals the district court’s denial
of its motions for judgment as a matter of law and the
district court’s injunction order. For the reasons set forth
below, we reverse the district court’s denial of judgment as
a matter of law regarding infringement. Because the
accused devices do not infringe the asserted claims of the
’431 patent, we vacate the jury award of damages and the
district court’s injunction order.

The CAFC noted:

A patent claim is literally infringed only if the accused
device embodies each limitation of the asserted claim.
Research Plastics, Inc. v. Fed. Packaging Corp., 421 F.3d
1290, 1297 (Fed. Cir. 2005) (citation omitted). The absence
of a single limitation in the asserted claim thus
defeats literal infringement. Id.


In support of its infringement allegations, Smith
submitted Mr. Kernell as an expert to explain how the
Multi-Man performs each limitation of claim 5 of the ’431
patent. On cross examination, Garlock focused on demonstrating
that the Multi-Man does not satisfy the claim
limitation “wherein the force causes the arm to shift to
the lowered position.” In particular, Garlock asked Mr.
Kernell to explain how the Multi-Man arm “pivots.” The
following exchange is exemplary of the dialogue between
Garlock’s counsel and Mr. Kernell on this point:
A: That pulley rotates and pivots to drive that
arm down into the surface, and that is the pivotal
movement of that arm.
Q: So it’s your opinion that this arm pivots?
A: Yes. The entire assembly, that pivoting of that
arm around that pulley that is my opinion.
Q: I’m not asking about the entire assembly.
We’re talking about the arm. This item says the
arm pivots. This arm does not pivot, does it?
A: No. That’s not correct. That is not my opinion.
If you look at the claim language, you’re taking
something out of context. In the claim language it
says the arrestor assembly has this pivoting motion
with the arm, and it is the pivoting around
that pulley that causes the arrestor assembly to
shift or pivot between the raised position and the
lowered position.
Q: Sir, back to our infringement definition. Each
and every element of the patent claim must be included
in the product; and as to Claim 5, the Multi-Man
does not – Multi-Man’s arm does not pivot,
and therefore, it does not infringe, correct?

A: No. That’s not correct.
J.A. 2104-05. Notably, Mr. Kernell did not answer the
question of whether the Multi-Man’s arrestor arm itself
pivoted. Mr. Kernell instead testified that there was
some pivoting motion involved in the arrestor assembly as
a whole, and that this motion was sufficient to satisfy the
claim limitation requiring that the arm itself pivot. See

Footnote 1 of the CAFC decision references a footnote:

In a single footnote in its brief, Smith contends
that “[w]hile Plaintiffs disagree with this construction, as
the prevailing parties below, they lack standing to appeal
the district court’s claim construction order.” Appellee Br.
at 7 n.3 (citing Novartis Pharmaceuticals Corp. v. Abbott
Labs., 375 F.3d 1328, 1339 (Fed. Cir. 2004)). Smith then
stated in an isolated sentence that “if this Court is inclined
to reverse the district court’s entry of judgment, it
also should reverse the district court’s claim construction
order and hold that the phrase ‘shift to,’ as used in claim
5, must be given its common and ordinary meaning in any
retrial of this matter.” Id. Smith’s comment is appealing
on its face; the plain meaning of the term “shift” does
seem different from the term “pivot.” We nonetheless do
not have occasion to address whether the district court’s
claim construction was proper because Smith has failed to
present any argument on appeal beyond their single
conclusory statement that we “should reverse the district
court’s claim construction.” See SmithKline Beecham
Corp. v. Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir.
2006) (holding that when “a party includes no developed
argumentation on a point . . . we treat the argument as

The CAFC invoked Johns Hopkins:

Our prior decision in Johns Hopkins controls the present
dispute. In Johns Hopkins, we considered infringement
of a claim to a method for mechanically fragmenting
blood clots to prevent occlusion of blood vessels.


Accordingly, we dismissed as
improper the prevailing party’s cross-appeal concerning
the claim construction, precisely because that party
prevailed before the district court. Thus, while Smith
could not have filed a cross appeal in this case concerning
the claim construction, Smith could have asserted “alternative
grounds in the record for affirming the judgment.”
Because Smith did not raise any such alternate grounds
on appeal, we cannot address the correctness of the district
court’s claim construction.


The present case does not involve a simple “battle of
the experts,” wherein the fact finder must weigh the
merits of the competing expert testimony. Here, the
record does not evidence a disagreement between the
experts as to whether the arrestor arm is pivoting. In
light of the absence in the record of any evidence that
could support the jury’s verdict of infringement, we must
reverse the district court’s denial of Garlock’s motion for
judgment as a matter of law on the issue of whether the
Multi-Man infringes claim 5. See The Shaw Group v.
Marcum, 516 F.3d 1061, 1065 (Fed. Cir. 2008) (holding
that judgment as a matter of law is appropriate where
there is a “complete absence of probative facts and only
speculation supports the verdict”).

The bottom line:

As discussed above, the district court erred in denying
Garlock’s motion for judgment as a matter of law that the
Multi-Man and Twin-Man products do not infringe the
asserted claims of the ’431 patent. Accordingly, we reverse
the judgment of the district court concerning infringement
of the asserted claims. Because the accused
devices do not infringe, we vacate the jury award of
damages and the district court’s injunction order.


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