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1987 WL 17836 Page 1
Not Reported in F.Supp., 1987 WL 17836 (N.D.Ill.)
(Cite as: 1987 WL 17836 (N.D.Ill.))
H Conditional Motion on Order Docketed August 17,
Only the Westlaw citation is currently available. 1987 and Second Conditional Motion on Order
Docketed August 17, 1987. These conditional A
motions are post-trial motions under Rules 50 and
United States District Court, N.D. Illinois, Eastem 59 of the Fed.R.Civ.P. They were filed
Division. conditionally to preserve the defendants’ contention
STRUCTURAL RUBBER PRODUCTS that the jury‘s verdict should not result in the entry
COMPANY, Plaintiff, of judgment and that this court must enter written
v. findings and conclusions of law and enter judgment
PARK RUBBER COMPANY and International on those findings and conclusions. [FNI] The case
Metals & Machines, Inc., Defendants. is now before the court for a ruling on defendants'
N0. 79 C 1223. post-trial motions. Some discussion of the
procedural tangle in which this case is once again
October 1, 1987. enmeshed is necessary.
MEMORANDUM OPINION AND ORDER Before the second trial, the plaintiff filed a motion
for summary judgment on the issue of obviousness.
GETZENDANNER, District Judge. The court denied the motion. On October 30, 1986,
I stated that the motion had been denied because
*1 This case was first tried before a july in 1982. there were disputed issues of material fact on the
The judgment entered by this court on September secondary considerations, but I also stated that I
30, 1982 in favor of the defendants was reversed by would have granted a defendants' motion for
the United States Court of Appeals for the Federal summary judgment on the primary considerations.
Circuit. The Federal Circuit ordered further The defendants, however, did not ask the court to
proceedings consistent with its opinion and such make conclusive fmdings in their favor on the
further proceedings have now been held, including a primary considerations and the case proceeded to
second jury trial on the issue of obviousness under trial on all of the issues, including both primary and
35 U.S.C. § 103. The jury found that the secondary considerations.
defendants failed to prove that the patents in suit are
invalid for reasons of obviousness. Prior to and throughout the trial, the court believed
that the jury's verdict would be advisory, because
On August 12, 1987, in accordance with the jury‘s the issue of obviousness is a question of law, and no
verdict, the court entered a finding on the issue of one suggested that the jury‘s verdict could be
liability in favor of the plaintiff and against the binding. During the trial, the parties fully litigated
defendants. This order was docketed August 17, all of the issues relating to the primary and
1987. The court advised the parties to treat the secondary considerations. At the instruction
August 12 order as the equivalent of the entry of conference, held at the close of the evidence, I
judgment for purposes of filing post-trial motions. again made it clear that I thought the jury‘s verdict
This was necessary because I was resigning from would be advisory and again no one disagreed.
the bench September 30, 1987 and I wanted to give Based on this belief I rejected the plaintiffs
the parties adequate time to brief the post-trial proposed jury instruction which asked the jury to
motions and for me to consider them. On August write essays on the issues relating to the primary
24, 1987, defendants filed two motions, First considerations, such as the scope and content of the
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1987 WL 17836 Page 2
Not Reported in F.Supp., 1987 WL 17836 (N.D.Ill.)
(Cite as: 1987 WL 17836 (N.D.Ill.))
prior art and the differences between the prior art defendants were ignoring the differences test and
and the claimed inventions. I told the lawyers that that the test could be resolved by a finder of fact in
it was asking too much from the jury, considering favor of either party. In this case, having
the long list of prior art involved in this case. detennined that the jury's verdict should be binding,
However, I did agree to ask the jury to identify the the jury is the fmder of fact and they found the fact
'pertinent' prior art and to answer a general question in favor of the plaintiff While I might reach a
on the obviousness issue. different conclusion, I cannot substitute my own
view of the facts for the jury's verdict.
*2 The jury found in favor of the plaintiff
Thereafter, the plaintiffs attorneys took the In reviewing the evidence as I must for purposes of
position, for the first time, that the jury's verdict the defendants' post-trial motions, [FN2] I conclude
could be binding. The issue was briefed and I that there was substantial evidence supporting the
agreed that the jury's verdict could be binding and I jury's verdict on the various questions put to the
entered a finding on the liability issue in the jury. Based on the evidence, the jury could have
plaintiffs favor based on the jury's verdict. I did found the pertinent prior art to be as they in fact
that despite the fact that the defendants had gone to found it, and that the differences between that prior
trial and verdict believing that the jury's verdict was art and the claimed inventions were substantial. For
merely advisory. While on the surface this example, the jury found the Goodyear crossing and
appeared unfair to the defendants, I concluded that the literature about that crossing to be pertinent
the trial would have been conducted by the prior art. Despite this finding, the jury f`ound
defendants in the same way even if they knew the against the defendants. This must have been
verdict would be binding. I also had confidence in because the jury found that the Goodyear crossing
the verdict because the jury was well above average during the relevant time period was a single piece as
and paid close attention throughout the trial. opposed to a two-piece structure, and there was
evidence to support either conclusion. The jury
The defendants' post-trial motions rely heavily on could have also found that there were other
the fact that I had reached the conclusion, based differences between the Goodyear crossing and the
solely on the primary considerations, that the claimed inventions, such as the longitudinal
claimed inventions were obvious, and that I drainage grooves recited in claims 5 and ll of the
believed this to be correct as a matter of law. If that '05l patent. [FN3]
remained the court‘s belief, the court would have to
grant the post—trial motions. However, I am no *3 The defendants argue that the jury's finding that
longer persuaded that this position is correct for the certain items were not pertinent prior art must be
following reasons: The defendants have overturned in light of the plaintiffs pretrial
consistently argued the cause--in the summary admission that certain items were in fact 'prior art.'
judgment motion, the trial, and the post—trial briefs—— However, the plaintiffs admission was only that the
without ever mentioning the differences between the items were 'prior art' and not 'pertinent prior art.'
prior art and the claimed inventions. The plaintiffs, The difference between the two concepts was
properly, have always insisted that the differences recognized by the court during the trial. The
issue is of critical importance under the Graham v. plaintiff has never admitted that anything was
John Deere Co. test and that the differences pertinent prior art. That is why the court put the
between the prior art in this case and the claimed question conceming pertinent prior art to the jury.
inventions are such that the subject matter as a
whole would not have been obvious at the time the The defendants further argue that the jury could not
inventions were made to a person having ordinary properly find that some items of prior art were not
skill in the art. The flaw in the defendants' pertinent prior art. For example, both sides' experts
argument did not become apparent to me until the testified that the Burns patent was pertinent prior art
trial unfolded. It was only then that I saw that the and yet the jury found that it was not. The court
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1987 WL 17836 Page 3
Not Reported in F.Supp., 1987 WL 17836 (N.D.Ill.)
(Cite as: 1987 WL 17836 (N.D.Ill.))
instructed the jury on the meaning of pertinent prior banned by the railroads, the court does not know
art. The jury could have followed the court's how long that ban will be in effect and whether it
instruction and concluded, notwithstanding the might be lifted. The defendants were selling the
expert testimony, that the Bums patent was not accused structure recently. There is no undue
pertinent since it did not address the problem of prejudice to the defendants if a permanent
prevention of track degradation and injunction is issued.
moisture—proofness.
*4 It is hereby held and ordered that:
On the secondary considerations, there was
substantial evidence supporting the jury's answers to 1) This court has jurisdiction of the parties and of
the relevant interrogatories. With respect to the subject matter of this action.
commercial success, the jury was not obligated to
accept either the plaintiffs or the defendants' charts 2) The plaintiff Structural Rubber Products
showing sales. The jury had the raw data and was Company has been the owner ofthe patents in suit,
V free to manipulate the data in any way the jury felt United States Patent No. 3,843,051 and United
was in accord with the evidence. States Patent No. 4,117,977, at all times since the
issuance thereof.
There was substantial evidence on the need for
improved railroad crossings and the need for a 3) Plaintiff has established by a preponderance of
moisture-proof crossing, and for a crossing that the evidence that claims 5, 9 and 11 of the '051
minimized rail chatter. The jury was free to credit patent and claims 1, 7, 8, and 10-15 of the '977
David Canfield's contemporaneous memoranda on patent are valid. Defendants have failed to meet
the value ofthe plaintiffs crossings. their burden of showing by clear and convincing
evidence that the inventions as defined by these
The defendants are able to recite many parts of the claims were obvious. These claims are not invalid
record which support their view on the secondary because they were obvious.
considerations. But viewing the record in the light
most favorable to the plaintiff as I must for 4) The defendants Park Rubber Company and
purposes of these motions, I conclude that there was International Metals and Machines, Inc. have
substantial evidence supporting the jury's view of infringed claims 5, 9 and ll of the '051 patent and
the secondary considerations. claims 1, 7, 8, and 10-15 of the '977 patent in
making, using and selling the accused PARKCO
Accordingly, defendants' post-trial motions are railroad crossing structure.
denied.
5) The court hereby permanently enjoins each of
The case is also before the court on the question of the defendants, their officers, agents, servants and
whether an injunction should issue against the employees, and all those in active concert or
defendants. At the request of the court in its August participation with them who receive actual notice of
12 order, the parties have submitted cases which this order by personal service or otherwise, from:
bear on the question of whether a permanent (a) making, using or selling, or aiding or abetting
injunction should issue against the defendants. The others in making, using or selling the accused
court has reviewed those cases, the plaintiffs PARKCO railroad crossing structure for the life of
proposed form of order, and the defendants' the '051 and '977 patents; and (b) infringing claims
objections thereto. I conclude that this is an 5, 9 and 11 of the '051 patent and claims 1, 7, 8, and
appropriate case for the exercise of the court's 10- 15 of the '977 patent, or contributing to the
equity jurisdiction under 35 U.S.C. § 286 for infringement of these claims for the life of the '051
injunctive relief. Although the sale of the accused and '977 patents.
PARKCO railroad crossing structure has been
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1987 WL 17836 Page 4
Not Reported in F.Supp., 1987 WL 17836 (N.D.Il1.)
(Cite as: 1987 WL 17836 (N.D.Ill.))
6) Judgment is hereby entered in favor of the Not Reported in F.Supp., 1987 WL 17836
plaintiff and against each of the defendants on the (N.D.Il1.)
plaintiffs claim that the defendants have infringed
claims 5, 9 and 11 of the '051 patent and claims 1, END OF DOCUMENT
7, 8, and 10-15 of the '977 patent.
7) All questions of damages, including costs and
attorneys' fees under 35 U.S.C. §§ 284 and 285 are
reserved until the accounting. Proceedings on the
accounting shall be stayed until the time for filing a
notice of appeal of this court's judgment shall have
elapsed, or if a notice of appeal is filed, until the
final resolution of that appeal.
8) Defendants’ post—trial motions under Rules 50
and 59 ofthe Fed.R.Civ.P. are denied.
This is a final and appealable order.
FNI The defendants filed a mandamus
petition with the Court of Appeals for the
Federal Circuit seeking an order from that
court directing me not to enter judgment
pursuant to the jury's fmdings but to enter
written findings of fact and conclusions of
law in accordance with Rule 52(a) of the
Fed.R.Civ.P. I purposely delayed entering
fmal judgment to give the Federal Circuit
time in which to rule on the mandamus
petition. On September 24 the Federal
Circuit denied that petition. Accordingly, I
shall proceed to enter fmal judgment today.
FN2 The Federal Circuit cases setting
forth the proper standard of review are
discussed in the parties' memoranda.
FN3 In their reply memorandum, the
defendants have missed the significance of
the plaintiffs discussion of the Goodyear
crossing. The defendants appear to believe
that the plaintiff was arguing these facts to
dispute the jury's conclusion that the
Goodyear crossing was pertinent prior art.
(Reply Memorandum at 12.) In fact, the
plaintiff argued these facts to show the
differences between the Goodyear crossing
and the claimed invention.
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