Bettcher v. Bunzl (CAFC 2011-1038, 1046) precedential; Judges Byrson, Linn (author), Reyna (dissent)

Jury Instruction

As explained by the CAFC ruling, the district court judge lied to the jury in his instructions.

In its claim construction brief, Bunzl asserted that "bearing surface" should be construed to mean "slideable support surface." Cross-Appellant Br. 4, J.A. 307T. Bunzl also asserted that "bearing race" should be construed to mean "channel configured to slideably support a rotary knife blade." J.A. 307S (emphasis added). As to both "bearing surface" and "bearing race," Bunzl did not provide argument in its brief except to say that "[t]his term is not commonly used by lay persons and jurors" and that failing to construe each term at all would be improper. J.A. 307S, 307T.

Rather than adopt Bunzl's proposals, the court told the jury to "give the rest of the words in the claims their ordinary meaning in the context of the patent specification and prosecution history." Trial Tr. 1429:2-4. The court commented that "[t]he only claim construction provided to the Court at the Markman hearing was frustoconical. There was no request for additional definitions, and I believe that request for additional definitions on the eve of or during trial is too late." Id. 1629:3-7.

The district court also presented the jury with the following instruction:

To anticipate a claim of the '325 patent, the pre- 1998 blade must contain every limitation of that particular claim. Anticipation requires that there is no difference between claims of the '325 patent and the pre-1998 Bettcher blade, as viewed by a person of ordinary skill in the art.

Trial Tr. 1434:17-23. Bunzl objected to the second sentence of the instruction because "the only prior art at issue with respect to the anticipation argument are prior art blades that were on sale by Bettcher more than a year before the effective filing date of the '325 patent," and because the statement was "not consistent with In re Schreiber." Id. 1624:14-19.

Bunzl argues that the district court's instruction to the jury that prior art must be understood "as viewed by one of ordinary skill in the art" is contrary to this court's inherency precedent and potentially misled the jury by excluding the possibility of an unappreciated inherent feature. Bunzl relies on In re Cruciferous Sprout Litigation, 301 F.3d at 1349 ("Inherency is not necessarily coterminous with knowledge of those of ordinary skill in the art . . . [who] may not recognize the inherent characteristics or functioning of the prior art." (quotation omitted)), In re Schreiber, 128 F.3d 1473 (Fed. Cir. 1997), and other cases, to support its view. According to Bunzl, the perspective of a person of ordinary skill in the art is irrelevant to inherency. Bunzl states that the jury instruction meant that "the jury could not have found anticipation of the claims unless it was also persuaded that before the critical date . . . a person of ordinary skill in the art had understood that the pre-1998 blades could have so functioned." Appellant Br. 37 (emphasis added).

The CAFC found the judge's jury instruction "harmless."

[W]hen the error in a jury instruction could not have changed the result, the erroneous instruction is harmless.

Bunzl has failed to establish that the jury instruction was wrong or that it suffered any prejudice.

Anticipation

Bunzl asserted at trial that the '325 patent was invalid as anticipated by prior art Bettcher blades that, while they contained a different bearing race configuration, included chamfered corners argued as inherently capable of being used as a bearing race.

The first question that comes to mind is whether Bunzl also argued obviousness, to cover any potential gap between "inherent anticipation" and "an obvious tweak." The CAFC opinion doesn't mention it, though of course either court could have found '325 obvious if not anticipated.

The CAFC was incoherent in its mumbling about anticipation inherency.

While Bunzl struggles to characterize this as a case of "inherency," it is nothing of the sort. Inherency can be established when "prior art necessarily functions in accordance with, or includes, the claimed limitations." In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002). "Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient." In re Oelrich, 666 F.2d 578, 581 (CCPA 1981).

First, the panel defines what inherency is according to function - a factual finding of black-and-white - either it functions the claimed way or it doesn't. The gibberish about "probabilities" cannot be reconciled with factual determination of function.

The CAFC's newest judge, Jimmie V. Reyna, carefully considered the evidence and opined the old crows as corrupt codgers. The panel majority didn't even bother to pull out the Pulp Fiction line, "Don't Jimmie me man."

The plain meaning of the claim language of the '325 patent reads on Bettcher's own prior art products, which include all of the structural features required by the claims, and which possess the capability of satisfying the functional or intended use limitations. As the '325 patent is therefore invalid for anticipation as a matter of law.

35 U.S.C. § 315

Bunzl filed a bungled reexamination request, which ended up "affirming the validity of all claims subject to reexamination." Before reexam was over, Bettcher successfully argued to exclude the references Bunzl used for reexam in court proceedings.

When the examiner issued the Right of Appeal Notice, Bettcher requested that the district court exclude certain of Bunzl's invalidity references under 35 U.S.C. § 315(c) on the ground that the examiner had already determined that they did not invalidate the claims of the '325 patent and therefore, according to Bettcher, Bunzl was estopped from asserting these references in district court. According to Bettcher, the § 315 estoppel took effect as soon as the examiner finished the reexamination and the Right of Appeal Notice was sent to the patentee. The district court agreed that the examiner had "issued a 'final determination' in the re-examination proceedings," and granted Bettcher's request to exclude the references. Bunzl included the exclusion of these references as a separate basis for its new trial motion. The district court denied Bunzl's motion, noting that "this issue is one of first impression." Sept. 16 Order at 1.

That was going to much against statute. The CAFC found: "that the estoppel provision of 35 U.S.C. § 315(c) applies only after all appeal rights are exhausted, including appeals to this court."

[T]his court vacates the denial of Bunzl's motion for new trial on invalidity based on references excluded under the district court's interpretation of § 315(c) and remands so that the district court may determine in the first instance whether a new trial is warranted in the particular circumstances of this case.

This ruling, however sensible, conflicts with Marine Polymer v. HemCon, a ruling just last week, that created intervening rights for non-final arguments during reexamination. Such pathetic inconstancy is typical of the CAFC's ineptitude and casual corruption.

Affirmed-in-part, vacated-in-part, and remanded.