March 3, 2010

New Trial for Inconsistent Verdict of Nonobvious Independent Claim, Obvious Dependent Claims

JMOL on validity reversed because judge misunderstood when art is analogous; claim constructions using dictionary and prosecution argument upheld.

A JMOL on validity of the dependent claims to cure an inconsistent jury verdict for obviousness of  claims dependent on nonobvious  independent claims could not stand because the district court’s basis for finding nonobviousness, that the asserted prior art was not analogous to the invention, was faulty.  Both the prior art and the invention pertained to cooling computers and electronic components.  The evidence supported the jury’s decision that the dependent claims were obvious, so the Federal Circuit remanded for a new trial on invalidity.  Just six months earlier the Federal Circuit dealt with another such inconsistent jury finding in Callaway Golf Co. v. Acushnet Co., 576 F.3d 1331, 1344 (Fed. Cir. 2009).

On claim construction issues, the court held that when the patent specification does not provide or suggest a particular definition for a term (here, “case”), interpretation may use a general dictionary definition.  There is an inference that different terms (“drive bay” versus “drive bay  slot”) are used to mean different things; here, intrinsic evidence supported giving the terms different meanings (amendment made during prosecution distinguishing prior art made prior art’s use of “slot” significant).

Comparer Corp. v. Antec, Inc., 2009-1248, -1249 (Fed. Cir. Mar. 1, 2010)