In Sulzer Textil A.G. and Sulzer Textile Inc. v. Picanol N.V., 02-141-, -1441 (Fed. Cir. February 17, 2004), the federal circuit affirmed the district court's denial of Sulzer's motion for a new trial, and held that trial courts have a duty to inform jurors both of pretrial claim construction rulings on disputed claim terms and also of the jury's obligation to adopt and apply the court's determined meanings of disputed claim terms in its deliberation of the facts.
After a losing trial on the merits, Sulzer moved for a new trial based on a jury instruction alleged to be erroneous because it included a reference to "manufacturing," which was not at issue in the claims of the patents-in-suit. Separately, Sulzer cited as error the failure of the district court to instruct the jury as to disputed claim terms (resolved by Markman ruling), and that the claims, as construed, were to be applied against the alleged infringing machines. Sulzer's motion was denied, and it appealed both the erroneous jury instruction as well as the grant of a motion in limine precluding it from introducing evidence of infringement under the doctrine of equivalents.
On appeal, the federal circuit began by stating that the question of whether jury instructions on issues of patent law are erroneous is a matter of federal circuit law to be reviewed de novo. In order to have a jury verdict set aside, a movant must establish that a jury instruction was legally erroneous and that the erroneous jury instruction had prejudicial effect.
The federal circuit found that the erroneous "manufacturing" instruction was a single mistaken reference and that the jury instructions, viewed in their entirety, presented the correct legal standard for infringement. The court also found that, although omission of the claim interpretation jury instruction was legally erroneous, the error was harmless because the outcome of the case would not have been different had the correct instruction been given. In support, the federal circuit pointed out that the proper claim construction was reflected in testimony presented at trial, and that any trial testimony to the contrary that may be prejudicial was introduced by Sulzer.
Finally, the federal circuit remanded the case for further determination on the complete record of whether Sulzer waived resort to the doctrine of equivalents, based on uncertainty as to whether the district court relied on Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 122 S. Ct. 1831 (2002) in issuing its in limine order.
To view the full decision visit http://www.aplf.org/mailer/Issue183.doc
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