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Issue 158 | February 11, 2004
Sulzer Textil A.G., et al., v. Picanol N.V.
 In Sulzer Textil A.G., et al., v. Picanol N.V., Nos. 02-1410, -1441 (Fed. Cir. Dec. 9, 2003), the Federal Circuit held that trial courts are obligated to inform jurors both of the court抯 claim construction rulings on all disputed claim terms and of the jury抯 obligation to adopt and apply the court抯 determined meanings of disputed claim terms in the jury抯 deliberations of the facts.

Sulzer抯 �3 and �6 patents relate to weaving machines used to make fabric and their methods of operation. In a pretrial ruling, the District Court adopted from the findings of a Special Master the claim construction of 12 disputed claim terms of the patents-in-suit. After a jury抯 noninfringement verdict in favor of Picanol, Sulzer moved for a new trial based on the court抯 failure to instruct the jury as to the meaning of the disputed claim terms that were the subject of the Markman order. The motion was denied. On appeal, the Federal Circuit stated this was error:
because the district court made specific claim construction rulings, it was required to inform the jury that it was not free to consider its own meanings for the disputed terms but must apply the district court抯 construction of the terms in its deliberations. The failure of the district court to inform the jury of the court抯 claim construction and to instruct the jury of its obligation to apply that construction in its infringement deliberations left the jury free to make its own determination of the meaning of the claims and was error.
However, the Federal Circuit affirmed the district court抯 denial of Sulzer抯 motion for a new trial, because Sulzer failed to establish prejudice flowing from the error.

Next, the Federal Circuit reversed the grant of Picanol抯 motion in limine, precluding Sulzer from introducing evidence of infringement under the doctrine of equivalents. Sulzer argued, and the Federal Circuit agreed, that the District Court抯 in limine order was erroneously based on Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 234 F.3d 558 (Fed. Cir. 2000) (en banc) (�em>Festo I�) (complete bar for equivalents under prosecution history estoppel), which was vacated and remanded by the Supreme Court subsequent to the trial and the denial of Sulzer抯 motion for a new trial. See Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 122 S. Ct. 1831 (2002) (�em>Festo II�). Because Festo II represented a change of law subsequent to the district court抯 Order and final judgment, Festo II governed the appeal. Accordingly, the Federal Circuit remanded the case to allow Sulzer to attempt to rebut the presumption of surrender of equivalents under Festo II.

Finally, the Federal Circuit affirmed the denial of attorney抯 fees under 35 U.S.C. � 285 because the case was not considered exceptional.

To discuss this topic further, please feel free to contact the author, Michael R. Dzwonczyk, (mdzwonczyk@sughrue.com), at Sughrue Mion, PLLC in Washington DC., USA.

The information contained in this email is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.

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