Rock Dust Dust-Up: Failure to Preserve Issues, Present Evidence at Trial Dooms Appeal

By on April 2, 2020
Posted In Patents

The US Court of Appeals for the Federal Circuit affirmed a jury verdict of infringement of a design patent on grounds that purported appellate issues had not been properly presented to the trial court. Hafco Foundry and Machine Co., Inc. v. GMS Mine Repair and Maintenance, Inc., Case No. 18-1904 (Fed. Cir. Mar. 16, 2020) (per curiam) (Newman, J., concurring in part, dissenting in part).

Hafco Foundry and Machine Company owns a US design patent for a rock dust blower, a piece of equipment used in mining. Hafco developed and manufactured the device and contracted with GMS to distribute it. When Hafco terminated the agreement, GMS produced its own rock dust blower. Hafco then sued GMS for infringement of its design patent. The jury found GMS liable for willful infringement and awarded damages. After trial, the district court entered a permanent injunction but, on GMS’s motion, remitted the damages award to zero and granted a new trial on damages, which it stayed pending appeal.

On appeal, GMS argued it was entitled to: (1) judgment of noninfringement as a matter of law, and (2) a new trial on infringement due to allegedly erroneous jury instructions. Hafco did not cross-appeal with respect to damages.

On the jury verdict of infringement, the Federal Circuit found that GMS’s noninfringement argument on appeal had never been made in the district court and that GMS had not presented at trial evidence relating to its appellate argument. Thus, the Court found that GMS had not preserved the argument for appeal.

Regarding jury instructions, GMS first argued that the jury instruction definition of the ordinary observer as “a person who buys and uses the product at issue” was incomplete. The Federal Circuit agreed but rejected this challenge because GMS had not sought a different instruction from the district court and had not explained the purported flaw in the definition. GMS also argued that the jury should have been instructed that “small differences between the accused and the claimed design” will avoid infringement. The Court rejected this challenge as legally incorrect, affirming the district court’s instruction that the question is how the ordinary observer would view the article as a whole. Finally, GMS argued that the jury should have been instructed to “familiarize yourself with each of the prior art designs that been brought to your attention.” The Court rejected that challenge because GMS failed to introduce or even attempt to introduce prior art at trial, and failed to propose a jury instruction on the issue. Thus, the court concluded that GMS had not demonstrated that a new trial was warranted and affirmed the judgment of the district court.

Judge Newman’s Dissent. Judge Newman concurred in the affirmance regarding infringement and in the denial of a new trial. She dissented in part because she would have also decided the damages award, thus avoiding the need for a new trial.

Practice Note. Parties should take care to preserve disputes of law in pre-trial and trial proceedings and to introduce or at least proffer evidence relating to such disputes. Failure to do so may foreclose any possibility of appeal.

Paul Devinsky
Paul Devinsky advises clients on patent, trademark and trademark litigation and counseling, as well as copyright counseling. He is also active in intellectual property (IP) licensing, transactions and due diligence, as well as post-issuance US Patent and Trademark Office (USPTO) proceedings such as reissues and inter partes review, covered business method patent review and post grant review, and appellate (Federal Circuit) advocacy. Read Paul Devinsky's full bio.