Read Corp., F.T. Read & Sons, Inc. v. Powerscreen of America, Inc.

PROST, Circuit Judge,

dissenting.

I respectfully dissent. After a fifteen-day trial where the parties presented the testimony of thirteen witnesses and introduced dozens of exhibits into evidence, a unanimous jury found that Powerscreen induced infringement of the ’000 patent and that the Powergrid device infringed under the doctrine of equivalents. The presiding Chief Judge, having also observed all the trial evidence and considered additional briefing and arguments of counsel, denied Powerscreen’s motion to overturn the jury’s verdict. According to the district court, “If the doctrine of equivalents has any remaining vitality, this is a case where the doctrine of equivalents is appropriately applied.” I agree.

“It is not the province of an appellate court to second guess the jury’s credibility determinations or to reevaluate the weight to be given to the evidence.” Comark Communications, Inc. v. Harris Corp., 156 F.3d 1182, 1192, 48 USPQ2d 1001, 1009 (Fed.Cir.1998). Our job is determine whether there is substantial evidence from which the jury could find infringement by a preponderance of the evidence standard, in light of all the evidence presented at trial, as well as reasonable inferences therefrom. Id. “Upon full trial, upon agreed and correct jury instructions, upon substantial evidence in the form of testimony and exhibits and demonstrations, a reasonable jury could have reached the verdict of infringement. That ends our review.” Malta v. Schulmerich Carillons, Inc., 952 F.2d 1320, 1331, 21 USPQ2d 1161, 1170 (Fed.Cir.1991) (Newman, dissenting). With all due respect to the majority, I understand the evidence as clearly supporting the jury’s verdict in this case, particularly when issues of credibility and all reasonable inferences from the evidence are resolved in Read’s favor.

The jury’s verdict can be most readily understood by starting with the evidence supporting inducement to infringe, because once the jury’s finding of inducement is accepted, it is easy to see how the jury then found infringement under the doctrine of equivalents. As discussed below, my view of the evidence is that the Power-screen device, once modified by customers who were so induced to make the relevant modification, is insubstantially different from the claimed center plate.

*513I. Inducement to Infringe

Only one limitation of the claimed shaker assembly is at issue in this case: the “at least one rigid longitudinal center plate generally parallel to and between the side plates and joining the upper and lower levels of structural cross beams such that forces applied to the screen assembly are transmitted through the center plate to the joined cross beams.” ’000 Patent, col. 5, I. 6 — col. 6, I. 2. The Powergrid shaker accused of infringement includes two center plates: an upper plate that joins the structural cross beams of an upper screen, and a lower center plate that joins the structural cross beams of a lower screen. Each center plate is welded to the back side of the screen box, and a gusset runs between the plates where they connect to the back of the screen box. Each of the center plates is drilled with five bolt holes at their front ends.

One of Read’s theories at trial was that Powerscreen induced customers to infringe claim 1 of the ’000 patent by bolting an additional plate into these holes, thereby connecting the upper and lower center plates of the screen box at their front ends. Read’s evidence included engineering diagrams of the upper and lower center plates showing the bolt holes, as well as a diagram of the plate that could be used to connect the upper and lower center plates using the bolt holes. According to Mr. Read, it would be trivial for a customer to add the connecting plate. “It would be about $40 for material and couple hours of labor, and it wouldn’t take that much to do,”

In addition, Powerscreen arranged for Mr. Read, Read’s expert Professor Slocum, and a special master appointed by the court to inspect a representative Pow-ergrid device located in Kentucky. The expert took a series of photographs of the device, which he discussed during his testimony and were admitted into evidence. These photographs show the upper and lower center plate structure of the Power-grid device — with bolt holes but without a connecting plate. Read’s expert testified that at some point in time, the device had been modified to include the connecting plate. Pointing to one of the photographs of the device, he showed the jury where “you can see the mark, painting mark where the plate has been bolted in the past.”

Notably, Powerscreen presented no witness to deny that the representative Pow-erscreen device once had a connecting plate. Nor did Powerscreen present a witness to deny that customers in general add these connecting plates. Rather, Power-screen relies on Mr. Read’s and Mr. Slocum’s admissions that they never actually observed a machine in the United States with the connecting plate installed. In response to this admission, Professor Slocum testified as follows on redirect:

Q. Okay. And did you — in your opinion, are the bolt holes there for the purpose of manufacturing the machine? ... What do you think they’re there for?
THE WITNESS: Well, I’ve designed a lot of big iron, which is what this is called. The only-reason I could possibly fathom why those holes are there for manufacturing purposes is to manufacture the upper and lower deck so they are aligned perfectly so you could later easily add the plate.
If there was no design intent to ever have a plate afterwards, you would never, ever spend the money to put the holes in there.

The only other evidence on this issue presented by Powerscreen was the following excerpt from the deposition transcript of Mr. Suitor, a Powerscreen engineer: “Machines going to the U.S. of A have no center plate” (emphasis added). While *514this statement may or may not be true (the jury was free to believe or disbelieve Mr. Suitor), this denial says nothing about what customers in the United States do once the machines are here.

In fact, warranty evidence shows that customers do indeed install the connecting plate. According to Professor Slocum, when a device does not have the connecting plate installed, the upper and lower screen decks are

inefficiently coupled together, so they’re only welded a little bit at the back, to— which created a condition, I believe that the warranty reports called for, where there was cracking and they had to fix the cracking, to where you bolt a plate into the front through the bolt holes that are provided in the upper and lower middle plates, again, you increase the stiffness or you decrease the deflections by a factor of five to ten. And, therefore, you’ll get rid of your cracking problems.

In other words, if customers did not install the connecting plate, their machines would crack apart. Yet of the over 500 devices sold in the United States, fewer than 10 customers submitted warranty claims based on cracking. The logical inference from this evidence is that most, if not all, of Powerscreen’s customers installed the connecting plates.

Read’s counsel summarized the import of all this evidence during his closing argument:

[Tjhere’s evidence that the plate was in the machines in America. You will see the outline of the plate in this photograph that’s projected. You see the red, it’s been there.... And knowing Mr. Read was going to come in and see it, [Powerscreen] took it [the connecting plate] off for the inspection, got a little careless. So they see there’s no plate. But there is clear evidence that in this region here, and this region here, there was no paint, which means the plate was there and had been taken off. They knew Mr. Read was going to see it.

Based on my review of the record and the parties’ arguments on appeal, I understand the jury to have found that customers in the United States have indeed modified Powerscreen’s devices by adding the connecting plate using the existing bolt holes, an obvious and easy modification. The district court apparently shares my understanding of the evidence, stating that “there may be infringement by the doctrine of equivalents by bolting those things [the upper and lower plates] together, if anyone was doing that. But I think they can infer that people were.”

In my opinion, the jury’s verdict of inducement to infringe is supported by substantial evidence, including reasonable inferences that can be drawn from the evidence, and should be affirmed.

II. Infringement Under the Doctrine of Equivalents

Assuming that customers in the United States have been induced to add connecting plates to the Powergrid, as was found by the jury, then the next question is whether substantial evidence supports the jury’s verdict that the Powergrid, as modified, infringes under the doctrine of equivalents. In addition to the evidence already discussed, the testimony of Neil Suitor and Professor Slocum proves infringement under the doctrine of equivalents.

Suitor testified that Powerscreen “provided a series of bolt holes which we fit the two plates we’ve talked about with high tensile bolts originally connecting the top and bottom deck together and that gives *515us virtually a one piece center plate design, and by doing that we reduce the vibration of that design by a further 50 percent” (emphasis added). Powerscreen concedes that its one piece center plate design, allegedly only sold in Europe, would infringe claim 1 of the ’000 if sold in the United States; Suitor’s testimony concedes that the center plate design with the connecting plate is virtually the same thing. Likewise, Professor Slocum testified as follows:

Q. And when the plate is bolted in place, visualizing that structure, could you compare that with the plate as defined by the Court in the definition that the Court gave?
# * ❖ * % *’fi
A. And when the front center plates are bolted to the top and the bottom plates, and now we’ve got one, two, there’s two side plates, three, four plates, all assembled, I think it will match, literally the judge’s interpretation. And you will have a structure that has 95 percent the efficiency of, if we just took one single plate like Read uses and welded it in there.

In addition, Mr. Read, who appeared at trial as both a fact witness and an expert, testified as follows:

Q. Now, what would that plate do if it were bolted up?
A. Well, it would form — it would certainly serve as a — the strength of a full center plate, because it was attached on the back side, came all the way to the front, attached on the front side, it would transmit the strength from the top deck, those big beams, down to the bottom deck. Because the plate underneath the bottom went all the way down, it stuck down quite a bit, it was quite a strong plate underneath the whole structure there.

This testimony, along with the documentary evidence and testimony previously discussed with respect to inducement, in my opinion, establishes that the Power-screen device is insubstantially different from the claimed centerplate, when its upper and lower centerplates are bolted together at the front end. The jury’s verdict of infringement under the doctrine of equivalents should be affirmed based on this evidence.

In addition, I believe the jury’s verdict of infringement under the doctrine of equivalents can be affirmed even without the addition of a connecting plate. While the majority correctly notes that Professor Slocum conceded that such a structure would be inefficient, he did not concede that such a structure was not equivalent. In addition to the testimony identified in the majority opinion, Professor Slocum also testified as follows:

THE COURT: You’ve read over that claim, correct?
THE WITNESS: Yes, I have, sir.
THE COURT: Now, you think you’ve got an understanding of it?
THE WITNESS: Yes, I do, sir.
THE COURT: And is it correct to say that you don’t find exactly that plate in the Kentucky machine?
THE WITNESS: You mean the plate that’s in the claim?
THE COURT: Right.
THE WITNESS: It’s not-
THE COURT: You don’t find that in the Kentucky machine?
THE WITNESS: It’s not an exact literal plate.
*516THE COURT: Okay. Now, what do you find in the Kentucky machine that’s like that plate and how like is it?
THE WITNESS: Okay. Can I use my laser pointer?
THE COURT: Go ahead.
THE WITNESS: What I find is here is a center plate that joins together all the upper cross beams.... But in the back lever is where — okay, then you see the center plate here joining the lower, the lower beams? And this fin that sticks up, so now it splits the lower screen into two, two individual screens. And right in the back here is where, if you will, the center plate for the top screen and the center plate for the bottom screen are actually welded together back there.
So what you get is a very inefficient, if you will, structure that will partially couple, via this particular center plate, the upper screen to the lower screen.

In my view, this testimony explains Mr. Slocum’s later testimony on redirect that the unbolted center plate structure “inefficiently performed the function” of the claimed centerplate. See Opinion p. 7 (discounting this testimony as merely conclu-sory). Mr. Slocum’s testimony taken as a whole provides sufficient evidence for the jury to conclude that the unbolted center plate design performs the function of the claimed center plate through their connection to the back of the screen box. In addition to this testimony about the function of the unbolted center plate design, Mr. Slocum (and other witnesses) thoroughly explained the structure of the center plate design, pointing to photographs of the center plates and explaining their operation. These photographs and the diagrams of the center plates are additional evidence of infringement from which the jury could clearly understand the structure of the center plates.

My interpretation of Mr. Suitor’s testimony also differs from the majority’s interpretation. Mr. Suitor testified that the center plate design “rigidly connects the cross beams on each deck and transmits the forces from one to the other and into the back plate.” The majority interprets this statement as meaning that one center plate connects the upper crossbeams and another center plate connects the lower crossbeams. But Mr. Suitor’s testimony could be interpreted to mean that the center plates transmit “the forces from one [deck] to the other [deck] and into the back plate.” So understood, Suitor’s testimony is evidence that the center plate design transmits forces among the upper and lower decks’ cross beams. Mr. Suitor also testified about the result of using a center plate: to strengthen the screen box. While Mr. Suitor would not concede that using the unbolted center plates provided as much strength as a single center plate, he did testify as follows:

Q. Why is that plate included in the screen box at all?
A. It’s used to connect the cross beams which run transversely to each other.
Q. Does it strengthen the screen?
A. Yes.

Thus, while Mr. Suitor and Mr. Slocum may have provided testimony that appears ambiguous or conflicting at times, our perception of these ambiguities may be a result of our having only a transcript to read. The witnesses’ live testimony at trial, accompanied by reference to documents and photographs, may have been abundantly clear to the jury, and it is their job, not ours to evaluate the contradictory evidence and draw inferences therefrom.

In my opinion, when all of the evidence is considered in this case, substantial evidence supports the jury’s verdict of in*517fringement. I would therefore affirm the judgment of infringement.