L&W appeals from the portion of the judgment holding it liable under claim 7, and Shertech cross-appeals from the portion of the judgment holding claim 10 invalid. [CAFC 06-1065]

Infringement

The district court entered summary judgment of infringement because it found that Shertech had shown that the accused products contained each disputed limitation of the asserted claims and that L&W had failed to point to a genuine issue of material fact with respect to any of the claim limitations... The district court predicated its summary judgment of infringement in part on its conclusion that L&W “acknowledges that embossments separate the layers of its heat shields” when the component metal sheets are stacked together. Our review of the record, however, convinces us that L&W did not acknowledge that its embossments separate the layers of its heat shields.

In support of the district court’s conclusion that L&W had in effect acknowledged infringement of the “standoffs” limitation, Shertech relies heavily on a patent application filed by L&W.

But, the CAFC reasoned, the application and the accused product are two different things. L&W employees had admitted that the design in the application was "our design," but, as the court observed, that "fall[s] short of admission... that the accused products are identical to a specific heat shield described in the application."

Shertech had an expert witness, Dr. Holmes examine the accused products and testify.

L&W did not offer specific evidence to rebut Dr. Holmes’s measurements..., but instead relied on evidence pertaining to its heat shields generally in an effort to show that there is a genuine dispute of material fact as to the formation of air pockets in the L&W heat shields.

Both parties rolled the dice on all-or-nothing proposition, but it wasn't that simple to the appeals court.

The principal weakness of L&W’s evidence is that it does not directly confront Dr. Holmes’s measurements of L&W part #P30432B. Dr. Holmes’s analysis of that part was specific, and L&W’s response was general. If the parties and the district court had focused on the case of infringement with respect to part #P30432B, the district court might have found Dr. Holmes’s specific evidence as to that part inadequately rebutted, in which case the court would have been justified in concluding that L&W had failed to demonstrate the existence of a genuine issue of material fact as to that particular product. But Shertech did not move for summary judgment of infringement on a part-by-part basis. Instead, both parties approached the issue of infringement as an “all-or-nothing” matter, and the district court accordingly addressed the summary judgment motions in the same manner. On appeal, we decline to recast the motions and to grant relief that no party has sought, to wit, to affirm with respect to one product and reverse as to the others.

When a patentee with the burden of proof seeks summary judgment of infringement, it must make a prima facie showing of infringement as to each accused device before the burden shifts to the accused infringer to offer contrary evidence. See Saab Cars USA, Inc. v. United States, 434 F.3d 1359, 1369 (Fed. Cir. 2006) (party with the burden of proof on an issue must “provide evidence sufficient, if unopposed, to prevail as a matter of law”); see also Exigent Tech., Inc. v. Atrana Solutions, Inc., 442 F.3d 1301, 1307 n.6 (Fed. Cir. 2006) (same); Massey v. Del Labs., Inc., 118 F.3d 1568, 1573 (Fed. Cir. 1997); 11 James Wm. Moore, Moore’s Federal Practice § 56.13[1], at 56-135 (2006) (“[I]f the movant has the burden of persuasion on an issue, the movant must make a stronger claim to summary judgment by introducing supporting evidence that would conclusively establish movant’s right to a judgment after trial should nonmovant fail to rebut the evidence.”). On the record made before the district court, we hold that Shertech failed to satisfy its burden of showing that there is no genuine issue of material fact on the issue of infringement.

We vacate the judgment of infringement on claim 7 and remand for further proceedings as to infringement.

Validity

There was definite weirdness that independent claim 7 was found valid, but claim 10, dependent upon 7, was found invalid.

On appeal, L&W attacks the verdict as to claim 7 on three grounds: (1) inconsistency in the verdicts as to claim 7, an independent claim, and claim 10, which depends from claim 7; (2) inconsistency in the verdicts as to claim 7 and closely related independent claim 1; and (3) insufficiency of the evidence to support the jury’s verdict of “not invalid” as to claim 7. In its cross-appeal, Shertech agrees with L&W that the verdicts as to claims 7 and 10 are inconsistent but argues that the inconsistency should be resolved by holding both claims valid.

The snafu for appeal was procedural.

The district court held that both parties waived their objections to the inconsistency between the jury’s verdict on claim 7 and its verdict on claim 10 by failing to object before the jury was discharged. After the verdict was read, the district court conducted a jury poll, instructed the jurors as to their rights to talk about the case, and discharged the jury. Neither party objected before the jury was discharged that the special verdicts were inconsistent. Immediately after the jury was discharged, the district court asked counsel for any final additions to the record. Again, no objection was made to the verdict for inconsistency.

L&W argues that the return of the verdict, the poll of the jury, and the discharge of the jury all occurred within six minutes, and that counsel therefore “did not have adequate time to evaluate the verdicts for the first time.” However, the verdict was a simple one and the issue of inconsistency between the verdicts as to independent claim 7 and dependent claim 10 should have been obvious. Indeed, the use of the Rule 49 procedure to elicit specific factual findings from the jury should alert lawyers to the possibility that the jury’s responses might be inconsistent. See Skillin v. Kimball, 643 F.2d 19 (1st Cir. 1981). We are not persuaded that the period of time given to counsel to evaluate the relatively simple verdict in this case was insufficient to alert them to the possible inconsistency between the special verdicts on claims 7 and 10.

Not finding any basis for exception, the CAFC held the in/validity objections waived.

We affirm the portions of the judgment holding claim 7 valid and claim 10 invalid.

L&W next argues that the jury’s verdict is fatally inconsistent because the jury found claim 1 invalid and claim 7 valid, even though those two claims are indistinguishable. The district court considered and rejected that argument on the merits, so we too address the merits of that contention... Claims 1 and 7 need not rise and fall together because they do not have the same scope.

The inequitable conduct charge got booted for lack of intent; that held on appeal.