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854 F.2d 1328 Page l
854 F.2d 1328, 1988 WL 76497 (C.A.Fed. (Ill.))
(Cite as: 854 F.2d 1328, 854 F.2d 1328 (Table))
H prevents degradation of the track subgrade. Park
Structural Rubber Products Co. v. Park Rubber Co. denied that its manufacture and sale of its railroad
C.A.Fed. (111.),1988. crossing structure infringed Structura1's patent
NOTICE: THIS IS AN UNPUBLISHED claims and also asserted that the patents in suit were
OP1NION.(The Court's decision is referenced in a " invalid under 35 U.S.C. §§ 102 and 103 (1982).
Table of Decisions Without Reported Opinions"
appearing in the Federal Reporter. Use FI CTAF In the initial trial, a jury found Park's devices
Rule 47.6 for rules regarding the citation of infringed both patents but that the infringed claims
unpublished opinions.) were invalid under section 102. On appeal this
United States Court of Appeals, Federal Circuit. court reversed that judgment of invalidity under
STRUCTURAL RUBBER PRODUCTS CO., section 102 and remanded for further proceedings.
Appellee, Structural Rubber Prods. C0. v. Park Rubber C0.,
v. 749 F.2d 707, 223 USPQ 1264 (Fed.Cir.l984).
PARK RUBBER CO. and International Metals and
Machines, Inc., Appellants. In the second trial, in answers to specific
N0. 88-1129. interrogatories submitted by the court, the jury
determined that: 1) Park failed to prove that certain
July 27, 1988. references were "pertinent" to the claims of the '051
and '977 patents; 2) the evidence established the
N.D.Ill. existence of objective indicia of nonobviousness in
cormection with the claimed inventions; and 3)
AFFIRMED. Park failed to prove any of the claims invalid for
obviousness. The district court denied Park's
post—tria1 motions for judgment notwithstanding the
Before EDWARD S. SMITH, NIES and PAULINE verdict (JNOV) and for a new trial, and granted
NEWMAN, Circuit Judges.N1ES, Circuit Judge. Structural‘s request for a permanent injunction
against Park to prevent further infringement. We
DECISION are unpersuaded by Park's arguments of prejudicial
procedural or substantive error in the second trial.
*1 Park Rubber Co. and Intemational Metals and
Machines, Inc. (collectively Park) appeal the final The standard of review of a jury verdict on a motion
judgment of the United States District Court for the for JNOV is to determine (1) if the jury's findings of _
Northern District of Illinois, Eastem Division, No. fact are supported by substantial evidence or (2) if
79 C 1223 (Sept. 30, 1987), holding Park liable for they were so supported, can the findings support the
infringement of United States Patent Nos. 3,843,051 legal conclusions of the verdict. Verdegaal Bros.,
and 4,117,977 ('051 and '977 patents, respectively), Inc. v. Union Oil C0. of Calf, 814 F.2d 628, 631, 2
owned by Structural Rubber Products Co. We USPQ2d 1051, 1052 (Fed.Cir.), cert. denied, 108
ajirm the judgmentinall respects. S.Ct. 95 (1987); Perkin-Elmer Corp. v.
Computervision Corp., 732 F.2d 888, 893, 221
USPQ 669, 673 (Fed.Cir.), cert. denied,469 U.S.
OPINION 857 (1984).
Structural‘s patents relate to highway railroad With regard to infringement, Park urges that there is
crossings having a moisture-proof surface that insufficient evidence of record to support the jury's
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854 F.2d 1328 Page 2
854 F.2d 1328, 1988 WL 76497 (C.A.Fed. (111.))
(Cite as: 854 F.2d 1328, 854 F.2d 1328 (Table))
finding of infringement of either patent on a number a ruling) that the subject inventions were obvious.
of theories, none of which are persuasive. For She further stated that had she remained of that
example, Park asserts that the answers to view, she "would have to grant the post-trial
interrogatories and the Kersey testimony are motions." However, as a result of the second trial,
insufficient evidence on which to rest a finding of she changed her opinion and, therefore, refused to
infringement. However, the evidence to establish overtum the jury verdict. The trial court clearly
infringement is not limited to that evidence, and, did not "abdicate" its responsibility to rule on the
thus, its argument, even if true, would not mandate application of the legal standard of obviousness to
reversal. With respect to the '977 patent, we are the facts here.
wholly unconvinced that Park established a
meaning of the terrn "affixed" rurder which it With respect to the factual deterrrrinations expressly
escapes infringement. Having considered these and or implicitly underlying the nonobviousness verdict,
all other of Park's infringement argrunents, it the trial court reviewed the record and rejected
suffices to say that the jury's verdict of infringement Park's assertion that the jury's findings were
is supported by substantial evidence and, therefore, unsupported by substantial evidence. We are
the district court properly denied Park's post-trial unpersuaded of error in that ruling. That certain
motions on that issue. references were found not "pertinent" reasonably
followed from the court's instructions to which Park
Tuming to the issue of obviousness, Park first made, and now makes, no objection. Nor are we
asserts that it was prejudiced by the trial court's persuaded, in any event, that the inventions would
acceptance of the jury's verdict as binding; have been obvious irrview ofthe references.
whereas, the court and the parties had agreed that
the jury would be advisory only. The trial court With regard to the jury's findings on the objective
explained that she did, in fact, change her view indicia of nonobviousness, ample evidence of
about the effect of a jury verdict on this issue, gave record supports those findings and, therefore, they
due consideration to Park's assertion of prejudice, must be upheld. Contrary to Park's assertions, the
and concluded "that the trial would have been district court did not improperly impose upon Park,
conducted by the defendants in the same way even through its instructions to the jury, the burden of
if they knew the verdict would be bi1rding." We persuading the jury by clear and convincing
are unpersuaded of prejudicial error in the court's evidence of the nonexistence of any objective
action. evidence of nonobviousness. Nor has Park
convinced this court that the trial court erred in
*2 Park's argrunent that as a consequence of the refusing to permit Park to introduce testimony
court's conversion of the "advisory" verdict to a " regarding the availability of David Canfield, author
binding" verdict, the trial court "abdicated" its of a report used by Structural as a basis for
responsibility to decide the legal issue of testirrrony directed to its evidence of
obviousness is fallacious. Contrary to Park's view, nonobviousness.
it is not only where a jury is "advisory" that the trial
court must rule on the application of the law to the As concems the court's ruling on the ultimate issue
facts. A JNOV motion requires the trial court to of obviousness, Park's arguments fall far short of
set aside a verdict where the court is convinced that convincing this court of legal error. Even if it were
the jury misapplied the law to the facts. Medtronic, true that there are no differences between elements
Inc. v. Intermedics, Inc., 799 F.2d 734, 738, 230 in the prior art and in the claimed invention, that
USPQ 641, 643 (Fed.Cir.1986), cert. denied,107 fact does not, as Park erroneously presumes, lead
S.Ct. 882 (1987); Structural Rubber Prods., 749 inescapably to a conclusion of obviousness. See
F.2d at 719, 223 USPQ at 1273. On this point, the Hartness Int'], Inc. v. Simplimatic Engg C0., 819
trial judge's memorandum opinion in the second F.2d 1100, 1108, 2 USPQ2d 1826, 1832
trial is especially helpful. She acknowledged that (Fed.Cir.1987) (In detennining obviousness, "the
during the first trial she had made the comment (not inquiry is not whether each element existed in the
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854 F.2d 1328 Page 3
854 F.2d 1328, 1988 WL 76497 (C.A.Fed. (111.))
(Cite as: 854 F.2d 1328, 854 F.2d 1328 (Table))
prior art, but whether the prior art made obvious the
invention as a whole for which patentability is
C181I1”1Cd.”). Park has not identified any suggestion
in the prior art references that would have
motivated one of ordinary skill in the art to combine
the prior art teachings. See Carella v. Starlight
Archery & Pr0 Line C0., 804 F.2d 135, 140, 231
USPQ 644, 647 (Fed.Cir.l986) ("Obvi0usness
cannot be established by combining the teachings of
the prior art to produce the claimed invention,
absent some teaching, suggestion or incentive
supporting the combination.").
*3 Park has also failed to convince this court that
the district court abused its discretion or otherwise
erred in enjoining Park from further infringement of
Structura1's claimed inventions. This matter was
reconsidered by Chief Judge Grady following the
trial judge's resignation, and we agree with his
assessment that Park's motions are lacking in merit.
For the above reasons, we affirm the district court‘s
judgment in t0t0.
C.A.Fed. (111.),1988.
Structural Rubber Products Co. v. Park Rubber Co.
854 F.2d 1328, 1988 WL 76497 (C.A.Fed. (111.))
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