NOTE: Pursuant to Fed. Cir. R. 47.6, this disposition
is not citable as precedent. It is a public record.
United States Court of Appeals for the Federal Circuit
04-1007, -1008
ISCO INTERNATIONAL, INC.,
Plaintiff-Appellant,
v.
CONDUCTUS, INC., and
SUPERCONDUCTOR TECHNOLOGIES, INC.,
Defendants-Cross-Appellants.
_______________________
DECIDED: February 3, 2005
_______________________
Before LOURIE, Circuit Judge, ARCHER, Senior Circuit Judge, and PROST, Circuit
Judge.
LOURIE, Circuit Judge.
ISCO International, Inc. (“ISCO”) appeals from the decision of the United States
District Court for the District of Delaware: (1) denying its motion for judgment as a
matter of law (“JMOL”), thereby sustaining a jury verdict in favor of Conductus, Inc. and
Superconductor Technologies, Inc. (collectively, “the defendants”) holding the asserted
claims of ISCO’s United States Patent 6,263,215 to be invalid and not infringed; and (2)
adopting the jury’s advisory determination that the ’215 patent is unenforceable due to
inequitable conduct. ISCO Int’l, Inc. v. Conductus, Inc., 279 F. Supp. 2d 489 (D. Del.
2003) (“Decision on Appeal”). The defendants cross-appeal from the decision granting
ISCO’s motion for JMOL that it did not engage in unfair competition. Id. We affirm.
BACKGROUND
ISCO sued the defendants for allegedly infringing its ’215 patent, which is
directed to a receiver front end for a cellular base station. At controversy are claim
limitations pertaining to a set of cryogenically-cooled components—RF filters made from
high-temperature superconducting material, and low-noise amplifiers—coupled to an
automatic bypass circuit for routing signals around those components in the event of a
cooling failure. Claim 10, the only claim at issue on appeal, reads as follows:
A receiver front end for receiving wireless signals on a plurality of
channels, the receiver front end comprising:
a plurality of planar filters for filtering a corresponding plurality of RF
signals corresponding to a plurality of channels to form a corresponding
plurality of filtered RF signals;
a corresponding plurality of amplifiers for amplifying the plurality of
filtered RF signals;
a cryogenic cooler for cryogenically cooling the plurality of filters and
amplifiers, the cryogenic cooler having a cooling member being configured
to cool simultaneously the plurality of planar filters and the plurality of
planar amplifiers; and
a switched bypass circuit around the receiver front end and one or
more sensors, wherein in a first mode when the one or more sensors
measure acceptable operational parameters the bypass circuit is
unswitched such that RF signals pass through the plurality of filters and
amplifiers in the cryogenic cooler and not through the bypass circuit and in
a second mode when the one or more sensors measure at least one
unacceptable operational parameter the bypass circuit is switched and RF
signals pass through the bypass circuit and not through the plurality of
filters and amplifiers in the cryogenic cooler.
’215 patent, col. 20, ll. 41-65 (emphases added).
The case was tried to a jury, which returned a verdict in favor of the defendants;
the asserted claims were found to be invalid for obviousness, not infringed, and
unenforceable for inequitable conduct. The jury also found in favor of the defendants on
04-1007, -1008 2
their counterclaim that ISCO engaged in unfair competition. Arguing that the verdict
was not supported by substantial evidence, ISCO moved for JMOL and for a new trial.
The district court granted ISCO’s motion for JMOL only on the unfair competition claim,
but sustained the verdict of invalidity and noninfringement, and adopted the jury’s
advisory conclusion of unenforceability for inequitable conduct. Notwithstanding the
inequitable conduct determination, the district court did not find the case exceptional,
and accordingly denied the defendants’ motion for attorney fees under 35 U.S.C. § 285.
On appeal, ISCO challenges the district court’s denial of JMOL on the issues of
invalidity, noninfringement, and unenforceability, while the defendants cross-appeal
from the ruling granting JMOL in overturning the jury’s verdict on unfair competition.
The denial of attorney fees is not being appealed. We have jurisdiction pursuant to 28
U.S.C. § 1295(a)(1).
DISCUSSION
On appeal from a judgment denying a motion for JMOL following a jury trial, an
appellant “must show that the jury’s findings, presumed or express, are not supported
by substantial evidence or, if they were, that the legal conclusion(s) implied from the
jury’s verdict cannot in law be supported by those findings.” Perkin-Elmer Corp. v.
Computervision Corp., 732 F.2d 888, 893 (Fed. Cir. 1984). Accordingly, fact findings
reviewed under the substantial evidence standard require affirmance unless it can be
shown that no reasonable juror could have reached such a result. See id. Substantial
evidence is “such relevant evidence as a reasonable mind might accept as adequate to
support a conclusion.” Consol. Edison Co. v. NLRB, 305 U.S. 197, 229 (1938). Given
the highly deferential nature of the substantial evidence standard and because the
04-1007, -1008 3
issues are “highly fact-specific and evidence-oriented,” this case provides yet another
illustration of “the difficulty appellants face in attempting to persuade a court to reverse a
jury verdict involving questions of fact.” In re Hayes Microcomputer Prods., Inc. Patent
Litig., 982 F.2d 1527, 1532 (Fed. Cir. 1992).
A. Invalidity
ISCO attacks the verdict of invalidity primarily on two grounds: (1) that the jury
was not entitled to consider the ARPA report1 as prior art; and (2) that the jury could not
have reasonably reached its conclusion of obviousness based on the evidence
presented at trial. We address each of these contentions in turn.
1. The ARPA Report as Prior Art
As a threshold matter, ISCO accuses the district court of having erred in denying
its motion for JMOL by allegedly imposing on ISCO the burden of proving that the ARPA
report was not prior art. While unfortunate, any mischaracterization of the burden of
proof in an opinion, by itself, does not warrant reversal. See Stratoflex, Inc. v. Aeroquip
Corp., 713 F.2d 1530, 1540 (Fed. Cir. 1983) (“We sit to review judgments, not
opinions.”). “[I]f the district court failed to properly place the burden of proof, this court
will do so.” Union Carbide Corp. v. Am. Can Co., 724 F.2d 1567, 1573 (Fed. Cir. 1984).
In order to prevail, the appellant must therefore show that “the result, as opposed to the
reasoning, is erroneous as a matter of law.” Id. at 1573-74.
Claiming a conception date no later than December 1994, ISCO insists that the
ARPA report, which was first publicly presented in February 1995, was not prior art. In
1
Advanced Research Projects Agency (“ARPA”), “HTSC Dual Use
Applications Survey–Final Report: HTS Filter Applications: Cellular Telephone Base
Station Equipment,” presented Feb. 7, 1995. (J.A. 5142-5235).
04-1007, -1008 4
support of this contention, ISCO refers to various drafts of a December 1994 proposal,
entitled “Cryo-REACHTM Base Station Prototype,” that were prepared by ISCO’s
predecessor and which allegedly disclosed the device of claim 10.
We agree with the trial court that the ARPA report was prior art because the
December 1994 drafts did not evidence a conception of the claimed invention.
“Conception is the formation in the mind of the inventor, of a definite and permanent
idea of the complete and operative invention, as it is hereafter to be applied in practice.”
Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1376 (Fed. Cir. 1986)
(internal quotation marks omitted) (emphases added). The record reflects that ISCO’s
predecessor did not have a “definite and permanent idea” of the “complete” invention
defined in claim 10 at a time antedating the ARPA report. Specifically, the December
1994 drafts indicate that ISCO’s predecessor did not recognize or appreciate the
automatic bypass circuit as being part of the invention then conceived. “It is well-settled
that conception . . . cannot be established nunc pro tunc. There must be
contemporaneous recognition and appreciation of the invention represented by the
[claims].” Breen v. Henshaw, 472 F.2d 1398, 1401 (CCPA 1973). Because ISCO’s
predecessor failed to appreciate certain inventive features at the time of the alleged
conception, ISCO cannot rely on a later recognition of those features to retroactively
cure an incomplete conception.
That ISCO’s contentions effectively amount to an argument for nunc pro tunc
conception is apparent upon reviewing a December 14, 1994 draft marked “Plaintiff Trial
Exhibit: PTX-362” (J.A. 1725-1729), which declares:
The REACHTM receiver proposed herein is unique in that it involves:
04-1007, -1008 5
(1) fully integrated thin film superconducting components,
(2) ferroelectrically-tuned filter and receiver components,
(3) integrated, GaAs cryo-amplifiers,
(4) low noise oscillator, mixer, downconverter,
(5) frequency-hopping capability, and
(6) compact cryo-packaging.
PTX-362 at 3 (J.A. 1726) (emphases added). Whereas the filters, amplifiers, and
cryogenic cooler required by claim 10 are duly listed as “unique” features, the automatic
bypass circuit is conspicuously absent. Rather, that feature is listed elsewhere:
The [Technology Reinvestment Program] proposal will be to build and test
the 2 GHz “cold front end” components, integrate the components into
complete sub-system [sic], add lightning protection and automatic bypass
circuitry as needed to meet PCS service provider requirements, perform
the system integration, address manufacturing issues, and design system
control hardware/software.
Id. at 4 (J.A. 1727) (emphasis added). Here, the drafter of the proposal apparently did
not view the automatic bypass circuit to be an essential component, as it was to be
added only “as needed,” just like “lightning protection.” The lack of appreciation for the
bypass feature as an inventive element is further revealed where, in a list of “product
engineering issues” to be resolved, the entry specifically describing the bypass—i.e.,
“(5) bypass circuitry that automatically routes signal flow around the REACHTM receiver
if either the electronics or the compressor fails”—is crossed out in its entirety and is
replaced with an entry for “24 V power supply circuitry” in subsequent drafts, such as
the one dated December 19, 1994 marked “Plaintiff Trial Exhibit: PTX-299.” Compare
PTX-362 at 4-5 (J.A. 1727-28) with PTX-299 at 10-11 (J.A. 1542-43). Given that the
most detailed—albeit short—description of the automatic bypass circuit could not
survive an editorial revision, that feature can hardly be considered part of a “definite and
permanent” conception of the invention of claim 10.
04-1007, -1008 6
In subsequent drafts of the December 1994 proposal, the most substantive
description of the automatic bypass circuit that remains is the previously-noted cursory
mention that a bypass can be added “as needed,” but that provides an insufficient basis
for extrapolating therefrom the detailed limitations in claim 10 pertaining to the specific
operational modes of the bypass, its sensors, and the signal path. See Singh v. Brake,
317 F.3d 1334, 1340 (Fed. Cir. 2002) (“A conception must encompass all limitations of
the claimed invention . . .”).
In short, the deletion of details pertaining to, and the cursory mention of, the
automatic bypass circuit in the draft proposals are inconsistent with the argument that
the conception to be proven by those drafts included that element as an inventive
feature. Substantial evidence thus supports the jury’s implicit finding, see Perkin-Elmer
Corp., 732 F.2d at 893 (noting that “the law presumes the existence of findings
necessary to support the verdict the jury reached”), that the December 1994 draft
proposals fail to establish the conception date for claim 10, such that the ARPA report
was prior art.
2. Obviousness
Even if the ARPA report was prior art, ISCO contends that it is not an invalidating
reference that could have supported the jury’s finding of obviousness because the
record allegedly lacks evidence of a motivation to modify its teachings to obtain the
device of claim 10. For similar reasons, ISCO disputes the evidentiary significance of
another prior art reference presented at trial, the Robertson article,2 which it deems to
2
Mark A. Robertson, “Two applications of HTS technology on an airborne
platform,” in Proceedings of the International Society for Optical Engineering (SPIE):
High-Tc Microwave Superconductors and Applications, Jan. 1994. (J.A. 5257-5264).
04-1007, -1008 7
be non-analogous art that was not entitled to consideration by the jury in its
obviousness inquiry. We disagree; the record shows that the jury could have
reasonably considered these references to be invalidating prior art.
Regarding the alleged deficiencies of the ARPA report, ISCO insists that it does
not suggest the use of cryogenically-cooled amplifiers as required by claim 10, and that
it fails to teach the use of an automatic bypass circuit. However, the suggestion or
motivation to modify a reference may be derived from the knowledge of those skilled in
the art or from the nature of the problem to be solved. See Pro-Mold & Tool Co. v.
Great Lakes Plastics, Inc., 75 F.3d 1568, 1573 (Fed. Cir. 1996). Considerable evidence
was presented at trial of the knowledge of a skilled artisan in the relevant art and the
nature of the problem, from which the jury could have reasonably discerned a
motivation to modify the ARPA report to obtain the invention of claim 10.
Specifically, the jury was presented with prior art references showing that cooled
amplifiers, automatic bypass circuitry, and their benefits were well-known in the art at
the time of invention—e.g., the Robertson article mentions the noise-reducing effect of
using cryogenically-cooled amplifiers. (J.A. 5257). The jury also heard testimony from
at least two expert witnesses who explained how a skilled artisan reading the ARPA
report would have found it obvious to modify its teachings to include cooled amplifiers
and an automatic bypass. The ARPA report itself focuses on the problem of cryocooler
reliability and suggests a switchable bypass as a possible solution. (J.A. 5232). Given
the knowledge in the art presented at trial and the nature of the problem to be solved as
articulated in the ARPA report, the jury’s conclusion that claim 10 would have been
04-1007, -1008 8
obvious in view of the modified teachings of the ARPA report was supported by
substantial evidence.
Turning to the Robertson article, ISCO argues that it is non-analogous art
because it is directed to military—not cellular—applications. We find this basis for
disqualifying the Robertson article to be without merit in view of the fact that the
December 1994 draft proposals, on which ISCO has attempted to establish a
conception date for claim 10, are directed to a project for developing “front end
hardware for application to civilian wireless communications and military EW and mobile
communications systems.” See, e.g., PTX-299 at 1 (J.A. 1533) (emphases added). As
for its role in the obviousness inquiry, the Robertson article teaches all the key
limitations of the device of claim 10: the simultaneous cooling of filters and amplifiers,
and the addition of a bypass relay to safeguard the system in the event of a cooling
failure. While ISCO disputes whether the bypass relay disclosed in the Robertson
article is necessarily automatic in operation, the jury could have reasonably concluded,
based on the context provided by the evidence presented at trial of the knowledge in the
art, that the Robertson article would have rendered claim 10 obvious, either alone or in
combination with the ARPA report.
In sum, our review of the record under the substantial evidence standard
accorded to the jury’s conclusions provides us with no grounds for disturbing the verdict
of invalidity.
B. Other Issues
Because we are affirming the judgment of invalidity, the issue of infringement has
been rendered moot. Lough v. Brunswick Corp., 86 F.3d 1113, 1123 (Fed. Cir. 1996)
04-1007, -1008 9
(“No further public interest is served by our resolving an infringement question after a
determination that the patent is invalid.”). Nor do we reach the inequitable conduct
issue in light of the district court’s denial of the defendants’ request for attorney fees.
Cf. Buildex, Inc. v. Kason Industries, Inc., 849 F.2d 1461, 1466 (Fed. Cir. 1988)
(remanding case, after holding patent invalid, in order to allow district court to decide
whether case is exceptional for purpose of fee award). As the effect of unenforceability
on a patent held invalid is only meaningful as a basis for the award of attorney fees, the
denial of which is not herein appealed, the issue is moot.
As for the defendants’ cross-appeal, we affirm the district court’s grant of JMOL
on the unfair competition claim for reasons set forth in its detailed opinion, in particular,
that the defendants did not prove bad faith in the enforcement of the patent. Moreover,
ISCO, as a later assignee of the patent, was not a party to the alleged inequitable
conduct.
We have considered the parties’ other arguments and conclude that they are
either unpersuasive or unnecessary for resolution of this appeal.
CONCLUSION
For the foregoing reasons, we conclude that the district court did not reversibly
err, and accordingly affirm.
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