The U.S. Court of Appeals for the Federal Circuit has emphasized the need for litigants to preserve any objections they might have to the district court’s claim construction in order to preserve the issue for appeal, as well as the need for a challenger to patent validity to be cognizant of its burden in order to support a jury verdict of anticipation or obviousness. Koito Mfg. v. Turn-Key Tech., Case No. 03-1565, -1603 (Fed. Cir. Aug. 25, 2004) (Gajarsa, J.).
Turn-Key owned U.S. Patent No. 5,045,268 (the `268 patent) directed to a method of strengthening injection-molded plastics by cross-laminating layers of plastics. Koito brought a declaratory judgment action against Turn-Key, seeking judgment that the `268 patent was declared invalid, unenforceable, and not infringed by Koito’s products. After the Markman hearing, a jury found Turn-Key’s patent invalid and not infringed. Turn-Key appealed.
During appeal, Turn-Key attempted to object to the claim construction applied by the district court consistently throughout the litigation. However, the Federal Circuit found that Turn-Key had failed to preserve its claim construction argument and did not object to the jury’s instructions regarding claim terms. Turn-Key did not preserve its objections and was not permitted to contest the district court’s claim construction. Citing Abbott Labs. v. Syntron Bioresearch, Inc., the Court found that if Turn-Key had wanted a different construction it should have objected at trial.
With regard to validity, Koito introduced into evidence at trial a reference, but otherwise failed to provide any testimony or other evidence that demonstrated to the jury how that reference met the limitations of the claims of the `268 patent or how the reference enabled one of the ordinary skill in the art to practice the claimed invention. Koito did not even mention the reference after introducing it into evidence. Rather, Koito’s expert offered a conclusion of invalidity relating to a quintet of prior art patents that included the reference in question.
The Federal Circuit explained that testimony concerning anticipation must be testimony from one skilled in the art and must identify each claim element, state the witnesses’ interpretation of the claim element and explain in detail how each claim element is disclosed in the prior art reference. Testimony that is merely conclusory is insufficient. Because Koito failed to articulate how the reference anticipated or made obvious the `268 patent, the Court, citing Schumer v. Lab. Computer Sys., Inc., found Koito did not present sufficient evidence to support the jury verdict of invalidity with respect to the reference.
The Federal Circuit distinguished its rationale from two prior holdings in Union Carbide Corp. v. American Can Co. and Monsanto Co. v. Mycogen Plant Science, Inc. In Union Carbide, the Federal Circuit ruled that even though the alleged infringer did not provide explanatory expert testimony regarding the prior art references, anticipation was still found because the references and the patent were "easily understandable" and the patentee, rather than the alleged infringer, provided explanatory analysis regarding the prior art references. The Federal Circuit found that the reference in issue here was not an "easily understandable" patent.
In Mycogen, the Federal Circuit held "there is no general requirement that a party necessarily provide explanatory argument linking the evidence to each of the various elements of a legal theory." However, the Federal Circuit emphasized that this rule was articulated in the context of a priority contest and is subject to exceptions. The Court held that in order to support a jury verdict of obviousness, Koito needed some testimony or other evidence comparing the reference with the patent claims at issue (given that the reference in question was a technical patent document describing a novel manufacturing process).
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