Connell v. Sears, Roebuck & Co.
722 F.2d 1542 (1983)
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Rule of Law:
The ultimate question of patent obviousness under 35 U.S.C. § 103 is a question of law for the court to decide, and a court may grant a judgment notwithstanding the verdict (JNOV) overturning a jury's finding of non-obviousness if the factual findings underlying the jury's conclusion are not supported by substantial evidence.
Facts:
- Jerry F. Connell obtained U.S. Patent No. 3,459,199 for a hair 'teasing and unsnarling implement'.
- Before filing the patent application, Connell consulted a patent lawyer who advised him that the invention might not be patentable because of existing similar inventions ('prior art').
- Connell then hired a new lawyer and did not disclose five prior art patents, which the first lawyer had identified, to the Patent and Trademark Office (PTO) during the application process.
- One of the concealed patents disclosed tapered teeth of the precise shape Connell claimed as a novel feature of his invention.
- Sears, Roebuck and Co. sold hair curler devices that were substantially identical to prior art curlers.
- Connell alleged that Sears' hair curlers infringed his '199 patent.
- Connell had previously filed three other infringement lawsuits on the same patent, which were all settled for amounts significantly less than the projected cost of litigation.
Procedural Posture:
- Connell sued Sears, Roebuck and Co. in the U.S. District Court for the Northern District of Alabama, alleging infringement of the '199 patent.
- Sears denied infringement and filed a counterclaim seeking a declaratory judgment that the patent was invalid.
- Following a seven-day trial, a jury returned a verdict, with answers to special interrogatories, finding the patent was valid, enforceable, and infringed by Sears.
- Sears filed a motion for judgment notwithstanding the verdict (JNOV), asking the judge to set aside the jury's verdict.
- The district court judge granted Sears' motion for JNOV, entering a judgment holding the patent invalid for obviousness and not infringed.
- Connell (appellant) appealed the district court's grant of JNOV to the U.S. Court of Appeals for the Federal Circuit.
- Sears (appellee) filed a cross-appeal challenging the district court's refusal to overturn the jury's finding that the patent was not unenforceable due to fraud.
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Issue:
Did the trial court err in granting a judgment notwithstanding the verdict (JNOV) to invalidate a patent for obviousness, thereby overturning a jury's verdict that the patent was valid, on the grounds that the jury's underlying factual findings were not supported by substantial evidence?
Opinions:
Majority - Markey, Chief Judge
No, the trial court did not err in granting the judgment notwithstanding the verdict. A judge has the authority to overturn a jury's legal conclusion, such as non-obviousness, when the factual findings underlying that conclusion are not supported by substantial evidence. Obviousness is ultimately a question of law for the court, based on factual inquiries established in Graham v. John Deere Co. Although it is permissible to submit the question of obviousness to a jury, the court retains the final responsibility to ensure the law is correctly applied. In this case, the jury's findings, particularly its finding that there was 'no prior art,' were not merely unsupported by, but were directly contrary to, the substantial evidence presented at trial. The prior art that Connell concealed from the PTO was far more pertinent than the art the examiner considered. Therefore, because no reasonable jury could have reached the conclusion of non-obviousness based on the full record, the trial court properly granted the JNOV and held the patent invalid.
Analysis:
This landmark Federal Circuit case solidifies the roles of judge and jury in patent litigation, confirming that obviousness is a question of law reserved for the court. It establishes that a jury verdict on patent validity is not sacrosanct and can be overturned through a JNOV if it lacks a substantial evidentiary basis. This decision reinforces the court's role as a gatekeeper against improper jury verdicts, promoting uniformity and predictability in patent law, a core mission of the newly formed Federal Circuit. The case serves as a crucial check on jury power, ensuring that the legal standard of obviousness is applied rigorously and not supplanted by a jury's unsupported factual conclusions.
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