STRUCTURAL RUBBER PRODUCTS COMPANY, Appellant, V. PARK RUBBER COMPANY and Inter- national Metals and Machines, Inc., Appellees. Appeal No. 83-1326. United States Court of Appeals, Federal Circuit. Nov. 9, 1984. NIES, Circuit Judge. Structural Rubber Products Co. appeals from the judgment of the United States District Court for the Northern District of Illinois entered September 30, 1983, holding Park Rubber Company and International Metals and Machines, Inc., (collectively, Park) not liable for infringement of U.S. Patent Nos. 3,843,051 and 4,117,977, owned by appellant. The district court's judgment is based on invalidity of the patents for lack of novelty (35 U.S.C. § 102) in accord- ance with an answer given by a jury within a special verdict. In answer to other specific questions, the jury found that Park infringed both pat- ents and that neither the '051 nor '977 invention would have been obvious (35 U.S.C. § 103). With respect to '977, the jury further found that the invention had not been "on sale" or described in a printed publication more than one year before the patent application was filed and that there was no "misrepresentation" to the Patent Office. Structural argues that the district court erred in failing to grant its motion for judgment notwithstanding the verdict be- cause there was no evidence to support the lack of novelty defense with respect to either patent. Park argues that the judg- ment should be upheld because of each of the defenses it asserted at trial, including lack of novelty and those which were re- jected by the jury. Park also argues that the district court held that the inventions would have been obvious, thereby rejecting the jury's negative answers on this issue. Since we conclude: (1) that the district court erred in denying Structural's motion; (2) that no final decisions were made on the remaining issues; and (3) that other legal errors appear from the record, we vacate the judgment and remand for a partial new trial. The Patents in Suit The two patents in suit are directed to highway railroad crossings having a mois- ture-proof traffic surface designed primari- ly to prevent the degradation of track sub- grade. The crossing is formed by a num- ber of rectangular tubes aligned in the direction of the train track, which are cov- ered by a resilient waterproof lamina. The inventor named in the two patents in suit is Jacob Whitlock, an officer and principal shareholder of Structural. The first of the two patents, U.S. Patent No. 3,843,051, is- sued October 23, 1974, discloses a crossing formed of a middle section, which fits be- tween the two rails, and two side sections, which run from the outer side of each rail to the main roadway. To insure a water- tight seal between the rails and the cross- ing, the center section is oversized and must be bowed for insertion, thereby pro- viding a compression fit as shown below: The side portions (not illustrated above) are firmly anchored to the railroad ties at their outermost edge to prevent lateral move- ment and form a tight seal against the rail. To extend the crossing portions end-to-end down the track, an overlapping splicer piece is disclosed and claimed in the patent. Claim 9, used during trial as representa- tive of the invention, is reproduced below: CLAIM 9, UNITED STATES PATENT NO. 8,843,051 In a highway railway crossing having a pair of spaced substantially parallel rails secured to and supported by a plurality of transversely extending ties subtend- ing said rails, a pair of elongated compos- ite members arranged in abutting end-to- end relation and positionable between the rails and overlying a plurality of the rail supporting ties, each composite member comprising a one-piece upper lamina of resilient mois- ture-proof material having recessed, com- pressible elongated side edges for resil- ient sealing engagement with web por- tions of the rails, a plurality of elongat- ed reinforcing elements arranged in la- terally spaced substantially parallel re- lation and affixed to the underside of the upper lamina, corresponding reinforcing elements of the pair of composite members being ar- ranged in axially aligned relation, a joint formed between the abutting composite members being aligned with a given tie, and splicer means interconnecting the corresponding reinforcing elements, the splicer means for each pair of aligned reinforcing elements extending longitudi- nally of the elements a substantial dis- tance in opposite directions from the joint. The underscored portions are significant to our decision. The second patent, U.S. Patent No. 4,117,977, issued October 3, 1978, discloses improvement on the invention of the '051 patent. To facilitate the manufac- ture and installation of the crossing, the center section is divided into two halves. As shown below, an overlapping tongue-in- groove structure is present at the center joint to prevent any potential leakage: The halves of the center section are over- sized so that a compression seal is created at the junction of the halves, and between the outer edges of the halves and the rails. Representative claim 14, used at trial, is reproduced below: CLAIM 14, UNITED STATES PATENT NO. 4,117,977 In a highway crossing for a railroad wherein each of a pair of rails has a base section and a head section interconnected by a web section and wherein a plurality of spaced substantially parallel ties ex- tend transversely of the rails and are secured thereto in subtending supporting relation, the combination comprising: at least one pair of elongated lateral- ly-resilient gage section units adapted to be arranged in side-by-side relation intermediate the rails, said units having corresponding elongated inner faces in abutting relation, at least one of said faces being of resilient material and the combined width of the adjacent units, prior to assembly, being slightly greater than the spacing between the web sec- tions of said rails so as to provide, upon assembly, a resilient compressive fit be- tween said units which forms an elongat- ed substantially moisture-proof therebetween, each unit having joint 1. No appeal has been taken with respect to other counts of the complaint, each of which - an elongated outer face adapted to be disposed adjacent the web section of a rail and in substantial engagement there- with and an inner face provided with projecting segments constructed uni- tary with the gage section unit that interfit in an elongated tongue-in- groove relationship with corresponding segments of the adjacent unit of said pair, each gage section unit including a re- silient moisture-proof upper lamina and reinforcing means affixed to said lamina, the exposed surface of said lamina in- termediate the outer and inner surface of a unit being adapted to define a plane substantially coplanar with the upper surfaces of said rail head sections. Again, underscoring has been added to point out the elements of the claim which are principally in issue. The Trial The case was tried before a jury on pat- ent, unfair competition and common law frand counts, Structural charged Park, in- ter alia, with infringement of Claims 5, 9 and 11 of the '051 patent and Claims 1, 7, 8 and 10-15 of the '977 patent.' Park de- fended principally on the ground of non-in- fringement, but also asserted invalidity of the patents under $ 102 (lack of novelty) and under 35 U.S.C. $ 103 (obviousness). was also resolved in Park's favor. With respect to '051, Park relied on the prior art considered by the patent examiner during prosecution and, in addition, two patents not cited during prosecution, U.S Patent No. 2,828,079 to Rennels and U.S. Patent No. 1,191,561 to Burns. With re- spect to 917, Park's arguments wero based primarily on the '051 patent, which is prior art to '977. Lark aiso sought to prove that the '977 invention was invalid because of asserted "on sale" and "printed publica. tion" defenses under 35 U.s.0. s 1026). and because of alleged misrepresentation during prosecution of '977 before the Pat. ent and Trademark Office (PTO). The two last mentioned defenses concern an adver tisement for a grade crossing by Structural in Railway Track and Structures, a na- tone, trade magazine, published in May 1975, more than one year prior to the luing date of the '977 application, which Structur al did not bring to the attention of the PTO. Ine sever ontent seves. which wend presented to the jury in the form of ques- tions, were the following Based on the answers of the jury indi. cated above, the court entered judgment in favor of Park. Structural filed a timely motion for a judgment notwithstanding the verdict (JNOV) under Rule 50(6), Ped.R. Civ.P., having previously moved for a di rected verdict (Rule 50(a)). Alternatively, Structural requested a new trial (Rule 59(a)). Structural contended that there was no prior art reference which arguably could support the jury's verdict that either invention was not novel; that the jury's answers on the novelty, prior publication, on sale, and obviousness issues were incon- sistent and showed that the jury was con- fused; and, finally, that the instruction and interrogatory on novelty were apparently misunderstood by the jury in a way which neither the parties nor the court anticipa- ted. The instruction on novelty drafted and given by the court reads as follows: If the claimed invention is not novel, then the patent is invalid. By novel is meant that the invention should disclose something new, something which was not known at the time the invention was made. Once you have determined what the prior art is, you must compare that prior art with the invention defined by the claims of the patents in suit to deter mine whether the invention described by the claims is new in light of the prior art. If the claim describes something found in the prior art, then the invention de- fined by the claim is not novel and the patent is invalid. The district court denied the motion for JNOV on the novelty issue on the basis of "waiver", stating: None of the court's instructions to the jury on the patent issues were objected to by the plaintiff. Many of the plain- tiff's present complaints appear to argue with the legal standard applicable to the defense of novelty. Since the plaintiff did not object to the court's instructions on novelty, the plaintiff has waived any argument, direct or indirect, that the jury was misinformed about the law. I recall inquiring of the parties wheth. er a jury instruction on the issue of nov- elty was appropriate in the case because of the absence of evidence on the issue. When the issue was raised specifically to the parties, the defendant requested the instruction and the plaintiff did not ab- ject. ... In short, there has been a significant waiver during trial of the issues now raised post trial. The novelty issue un- questionably was not a subject to which the parties devoted themselves during the trial. But there was sufficient evi- dence in the record regarding prior art upon which the jury could conclude prop- erly that the patents (sic, i.e., inventions) were not novel under the court's instruc tions to the jury. The issue was for the jury, and I am not persuaded to set aside the jury's verdict or to grant a new trial. (Emphasis added.] With respect to Park's contingent motion for JNOV or a new trial on the basis of its defenses rejected by the jury, the court denied the motions as moot, stating: (While I am convinced that the plain- tiff's patents were not valid because the claims were obvious, it would be a waste of judicial resources to reach this issue in light of the court's ruling on the plain- tiff's motions. On appeal, Park contends that the lack of novelty verdict is supported by substantial evidence, that the above statement by the court constitutes a holding by the district court of invalidity for obviousness, and that the merits of its other defenses would re- quire a judgment in its favor. Having noted the absence of evidence on novelty and having given Park the benefit of every reasonable factual inference, we conclude that the district court should have granted Structural's motion for judgment notwithstanding the verdict. Structural argues that the remaining an- swers by the jury entitle it to a judgment that its patents are valid and infringed. For reasons discussed infra, however, we 2 69 Calif.L.Rev. 731, 732 (1981). decline to direct entry of judgment in favor of Structural. Rather, we remand for re- trial of the issue of obviousness and such other issues as the trial court deems neces- sary, other than the defenses based on $ 102. 11. Fundamental to our decision here is the premise that jury trials must be conducted in such a manner as to produce informed and, thus, fair verdicts. As Judge Schwar- zer has written in a comprehensive article, "Communicating with Juries: Problems and Remedies"= This situation confronts the bench and the bar with the challenge of ensuring that juries return verdicts conforming to both the law and the evidence. This challenge implicates all aspects of pre- trial and trial management, but the crit- ical pressure point probably is the in- structing (charging) of the jury. Prevail- ing practices of instructing juries are often so archaic and unrealistic that even in relatively simple cases what the jurors hear is little more than legal mumbo jumbo to them. Responsibility for the shortcomings of present practices must be shared by lawyers, trial courts, and appellate courts-lawyers for submitting self-serving, excessively long and argu- mentative instructions, trial judges for adhering to archaic practices out of fear of being reversed, and appellate courts for elevating legal abstractions over jur- or understanding. Litigants have the right to have a case tried in a manner which ensures that factu- al questions are determined by the jury and the decisions on legal issues are made by the court, various bechoiques for accom- plishing that objective being available un- der the Pederal Rules of Civil Procedure (Railroad Dynamics, Inc. v. A. Stucki Co., 127 F.2d 1506, 1515, 220 USPQ 929, 938 (Fed. Cir. 1984)), and under the Inherent powers of the judge to control the course of a jury trial. P. James & G. Hazard, Civil Procedure 227-345 (1977). By the same token, it is incumbent on the parties to present proper motions and/or requests to the trial court to exercise their rights under the Rules. On appeal, litigants can not expect to be heard for the first time on objections which could and should be raised in the trial court as to the conduct of the trial." As Judge Schwarzer indicates, the court's instructions to the jury, a matter which we will address in due course, are critical. However, during the course of a trial it is incumbent on the court to discern what material, factual issues are actually present in the case. This duty requires the court to have a working familiarity of the law applicable to the case before the trial begins. It is inconceivable that litigants would expect a court to conduct a meaningful patent jury trial involving the issue of va- lidity without working knowledge of the principles of Graham a John Deere Co., 383 U.S. 1, 86 S.CL. 684, 15 L.Ed.2d 545, 148 USPQ 459 (1966). Yet the record indi- cates specifically, not inferentially, that it was not until the arguments on the motions for JNOV that counsel indicated the impor tance of that case to the court. Had the trial begun with that enlightenment, we have little doubt that the court would have handled the trial in a substantially differ- ent manner. Graham = John Deere tells us, "[The ultimate question of patent validity is one of law." 883 U.S. at 17, 86 S.Ct. at 693, 148 USPQ at 467. This court has concluded from Graham, that at both the trial and appellate level of proceedings it is the responsibility of the court to be satis- fied that the party challenging validity has properly carried its burden of overcoming 3. See Bio-Rad Laboratories, Inc. v. Nicoler In- strument Corp. 739 F.2d 604, 615, 222 USPO 654, 662 (Fed.Cir.1984). But see American Hoist & Derrick Ca v. Sowa & Sons, Inc. 1350, 1364, 220 USPO 763, 774 (Fed.Cir.1984) (plain error in instruction, not objected to, re- quired new trial). 4. 35 U.S.C. 282 provides in pertinent part: the statutory presumption of validity of patent, 35 U.S.C. § 2821 Bnvirotech Corp. a. Al George, Inc, 730 F 2d 753, 762, 221 USPQ 473, 480 (Fed. Cir. 1984). Validity encompasses three "separate tests of pat- entability": noveity, utility and nonobvious. ness. United States a Adams, 383 U.S. 39, 48, 86 S.CL. 708, 15 LABd.2d 572, 148 USPQ 479, 482 (1966). Thus, included within the presumption of validity is a pre- sumption of novelty, a presumption of non- obviousness and a presumption of utility, each of which must be presumed to have been met. Medtronic, Ic. Cardiac Pacemakers, Ine, 721 P.2d 1563, 1567, 220 USPQ 97, 100 (Fed.Cir. 1983). As this court stated in American Hoist & Derrick Co. a Sowa & Sons, Inc., 725 F.2d 1350, 1360, 220 USPQ 763, 771 (Fed. Cir.1984): To summarize on this point, $ 282 cre- ates a presumption that a patent is valid and imposes the burden of proving inval. Sdity on the attacker. That burden is constant and never changes and is to convince the court of invalidity by clear evidence. Deference is due the Patent and Trademark Office decision to issue the patent with respect to evidence bear- ing on validity which it considered but no such deference is due with respect to evidence it did not consider. All evidence bearing on the validity issue, whether considered by the PTO or not, is to be taken into account by the tribunal in which validity is attacked. With this background we turn to the issues at hand. III. Novelty The reference which Park contends sup ports the jury's verdict that the invention A patent shall be presumed valid. claim of a patent Each whether in independent dependent, or multiple dependent form) shall by route calis penely of mutile. cholas dependent claims multiple presumed valid even though dependent upon an invalid claim. The burden of establishing invalidity of a pat- ent or any claim thereo shall rest on the party asserting such invalidity. Rennels '079 discloses a crossing with a one-piece rubber center section which is reinforced by a corrugated meta. Diate. in contrast to the "plurality of elongated rein- forcing: elements" called for in the '051 chaims. The specification of Rennels '079, however, states: Those skilled in the art will also recog- nize that while a longitudinally corrugat- ed reinforcing member such as shown here is preferred, it may be possible to alternately (sic] employ pipe, rods, beams, or other longitudinally positioned Park admits that none of the references discloses a pair of side-by side section units intermediate the rails that interfit with a tongue-in-groove joint, thus confirming the district court's recornition that there was "an absence of evidence on the (novelty] issue." A review of the evidence set out above leaves no room for doubt that Strue- tural's attack on the judgment was weil founded and that its motion for JNOV should have been granted. This court has repeatedly stated that the defenae of lack of novelty (ie., "anticipation") can only be established by a single prior art reference which discloses each and every element of 3, The parts of the patent statute (Title 35) nent to our analysis are the following (all em. phasis ours, § 101. Inventions patentable Whoever invents or cleovers say new sodi uscrul process machine, manufacture, or composition of matter, or any new and uschul improvement thereol, may obtain a patent members to enable the slab to support itself on spaced ties.. Admittedly, there is no disclosure in Ren- nels '079 of any "splicer means" element, as required by the claims in '051, for splic- ing sections "down the track." With respect to '977, Park contends that anticipation is established by Rennels '079, by the '051 patent, or by the following advertisement which is also the basis for the asserted and rejected $ 102(b) defens- the claimed invention. RCA Corp. v. Ap- plied Digital Data Systems, Inc., 780 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 198-4); Radio Steel & Mfg. Co. v. MTD Products, Inc., 731 F.2d 840, 845, 221 USPQ 657, 661 (Ped.Cir.1984); Connell v. Sears, Roebuck & Co., 722. F.2d 1542, 1548, 220 USPQ 193, 198 (Fed.Cir. 1983); Kal- man v. Kimberly-Clark Corp., 718 F.2d 760, 772, 218 USPQ 781, 789 (Ped.Cir. 1983); SSIH Equipment, S.A. v. U.S. It'l. Trade Comm'n., 718 F.2d 365, 377, 218 USPQ 678, 688 (Fed.Cir. 1983). The statutory language mandates such an approach.' Section 102 speaks in terms therefor, subject to the conditions and re quirements of this title. 3304 Conditions for patentability; novelty and loss of right to patent A person shall be entitled to a patent un- less- (a) the invention was known or used by others in this country, or patented or describ- of the invention having been known or used by others, or patented or described in a printed publication. Moreover, Section 108 provides that a patent may not be obtained "though the invention is not identically disclosed or described as set forth in Section 109" (emphasis added). In view of Park's admissions that no single prior art reference discloses each element of any claim of either '051 or '977, the defense of invalidity for lack of novelty fails as a matter of law. Park characterizes the differences over the prior art here as "insubstantial" or "clearly obvious", and argues that the inventions, therefore, are not novel under the principles set forth in the concurring opinion in In re Arkley, 455 F.2d 586, 590,, 172 USPQ 524, 528 (CCPA 1972) and re- sponded to in in re Schaumann, 572 F.2d 312, 317, 197 USPQ 5, 10 (CCPA 1978). However, Park misconstrues the import of the discussion in these opinions. While the teaching in the prior reference need not be ipsissimis verbis, nevertheless, there must be a teaching with respect to the entirety of the claimed invention. Park argues that missing elements may be supplied by the knowledge of one skilled in the art or the disclosure of another ref. erence, citing In re Foster, 343 F.2d 980, 145 USPQ 166 (CCPA 1965). Contrary to Park's view, Foster holds that a statutory time bar under $ 102(b) may be invoked if the invention would have been obvious from a prior art reference. volved an obviousness Foster in- rejection (5 103) based on combining a statutory time bar (5 102(b)) and a prior art reference. Here, Park lost on both $ 103 and $ 102(b) de- tenses and, thus, can und no support in Foster on which to uphold the judgment. Park's arguments are indistinguishable from statements made by the district court in Connell v. Sears, Hoebuck & Co., which this court rejected as follows: The opinion says anticipation may be shown by less than "complete anticipa- tion" it one of ordinary skill may in re- hance on the prior art complete the work regured for the invention" • and that "it is sufficient for an anticination "f the general aspects are the same and the differences in minor matters is only such as would suggest lselt to one of ordi- nary skill in the art. Those statements relate to obviousness, not anticipation. Anticipation requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim. Soundscriber Corp. u, U.S., 360 F.2d 954, 960, 148 USPQ 298, 301 (Ct. Cl. 1966). A prior art disclosure that "al- most" meets that standard may render the claim invalid under § 108; it does not "anticipate." Though it is never neces- sary to so hold, a disclosure that antici pates under $ 102 also renders the claim invalid under $ 103, for "anticipation is the epitome of obviousness," In re Fra- calossi, 681 F.2d 792, 215 USPQ 569 (CCPA 1982). The reverse is not true, for the need to determine obviousness presumes anticipation is lacking. 722 F.2d at 1648, 220 USPQ at 198. Thus, Lark's arguments can not substitute for the absence of evidence of an anticipa- tory reference. Returning to the instruction on novelty, the court did not authorize the combining of references or supplementing a prior dis. closure with knowledge in the art to find lack of novelty. From having read the instructions in their entirety, we conclude that the jury was confused, perhaps by the novelty instruction being preceded by an obviousness instruction which did refer to skill in the art with no clear distinction being drawn, to a layman, between them. The jury could have been misled, as well, by the unsupportable instruction that the invention is not novel it the claim describes "something found" in the prior art. However that may be, the trial court erred in giving the jury the question of novelty on which there was no evidence arguably showing identity with a prior art disclosure and in failing to grant Structur al's motion. As this court stated in Nestier Corp. v. Menasha Corp., 739 F.2d 1576, 1579, 222 USPQ 747, 750 (Fed.Cir.1984): "In a jury trial, a court should not instruct on a proposition of law about which there is no competent evidence." See also B.I. Du- Pont de Nemours u. Berkley & Co., 620 F.2d 1247, 1258-1261, 205 USPQ 1, 8-11 (8th Cir. 1980) (Markey, C.J., sitting by des- ignation). In view of the absence of evidence to support the legal conclusion of invalidity based on lack of novelty of the '051 and '977 inventions, the judgment resting on that ground cannot stand.