holding that an accused device does not infringe under the doctrine of equivalents if “the equivalent device is within the public domain, i.e., found in the prior art”
How later courts described this case
- holding that an accused device does not infringe under the doctrine of equivalents if “the equivalent device is within the public domain, i.e., found in the prior art”
- holding that when "a court does not discuss certain propositions,” that "does not make the decision inadequate or suggest the court failed to understand them”
- stating that “the law presumes the existence of findings necessary to support the verdict the jury reached”
- review of presumed jury finding that anticipation not proved, based on jury verdict of validity
Written by the judges who cited it.
The opinion
DAVIS, Circuit Judge,
dissenting.
I am concerned that the District Court denied the appellant’s motion for new trial on validity simply because the judge felt compelled to do so by the Ninth Circuit’s ruling on infringement, despite the District Court’s strongly expressed views (in argument) that (a) the Ninth Circuit’s interpretation of the patent (in the infringement appeal), without any necessary jury findings supporting that position, was “absurd”, “not according to me”, “not according to the jury”, a position “with which I strongly take issue”, 1 (b) that the patents could not both be valid and infringed, but (c) that the District Court felt bound to uphold validity by the Ninth Circuit’s infringement decision because that appellate court interpreted the patents broadly as a “conclusion of law”, though the District Court clearly considered that that interpretation, if proper, would necessarily depend on findings of fact to be made by the jury but not actually made in this case.
Because the District Court indisputably believed that the original jury had not interpreted the patent, on the basis of the court’s instructions, in the way the Ninth *903 Circuit had done, and because, if one accepts the Ninth Circuit’s interpretation, appellant was entitled to a new trial so that the “obviousness” findings required by Graham v. John Deere Co., 383 U.S. 1 , 86 S.Ct. 684 , 15 L.Ed.2d 545 (1966), should be made by a jury with respect to the Ninth Circuit’s interpretation of the claims, a new trial should have been granted. It was not granted solely because the District Court erroneously felt bound with respect to validity by the Ninth Circuit’s infringement decision. 2 That was an abuse of discretion, calling for reversal of the refusal to grant the new trial requested by appellant and a remand for a new trial on validity only. 3 “Rule 59 [New Trials] gives the trial judge ample power to prevent what he considers to be a miscarriage of justice. It is his right, and indeed his duty, to order a new trial if he deems it in the interest of justice to do so.” (emphasis added) 11 Wright & Miller, Federal Practice and Procedure, Civil § 2803, pp. 31-2 (1973). When, as here, the trial judge refuses to grant a motion for a new trial which he plainly should have granted, an abuse of discretion has occurred. Ruiz v. Hamburg-American Line, 478 F.2d 29, 34 (9th Cir.1973).
. The District Court somewhat earlier said: "I am rather concerned as to whether or not in the light of that most unusual act of [the Ninth Circuit], where [they] really made a finding of fact there, whether the defendant doesn't deserve a new trial on the issue that’s brought back here.”
The Ninth Circuit's interpretation was that the appellant's system and the appellee’s claims were practically identical, with “miniscule” differences.
. It is undisputed that the Ninth Circuit did not consider validity at all.
. I agree with the majority that this court should not reconsider the Ninth Circuit’s determination of infringement.