Koito Manufacturing Co., LTD., et al. v. Turn-Key-Tech, LLC., et al. (Fed. Cir.)

August 23, 2004 on 5:51 pm | In Caselaw |

Koito Manufacturing Co., LTD., et al. v. Turn-Key-Tech, LLC., et al.
Federal Circuit, August 23, 2004, before BRYSON, GAJARSA (opinion), and DYK, Circuit Judges.

Turn-Key-Tech, LLC and Jens Ole Sorenson (“Turn-Key”) appeal from the denial of their motions for a new trial and a judgment as a matter of law (“JMOL”) by the United States District Court for the Southern District of California with respect to a jury’s findings (1) that Claims 1, 3, 12, 13, 15, 18, 21, 30-33, and 36 of Turn-Key’s U.S. Patent No. 5,045,268 (the “’268 patent”) are invalid as anticipated and obvious and (2) that the ’268 patent is not infringed by taillights produced by Koito Manufacturing Co., Ltd. and North American Lighting, Inc. (collectively “Koito”). Koito Mfg. Co. v. Turn-Key-Tech, LLC, No. 02-C-273 (S.D. Cal. July 16, 2003). In its decision, the district court partially granted Turn-Key’s motion for a JMOL by overturning the jury’s finding that all 38 claims of the ’268 patent are invalid for lack of enablement, failure of the written description, and a certificate of correction adding new matter. Koito cross-appeals the district court’s grant of a JMOL on these other grounds for invalidity.

We affirm the district court’s grant of Turn-Key’s JMOL and agree that Koito failed to fulfill its burden of showing that the ’268 patent is invalid for lack of enablement, failure of written description, and the addition of new matter. We also affirm the district court’s denial of Turn-Key’s new trial motion and JMOL with respect to the jury’s verdict of noninfringement. However, we vacate the district court’s denial of Turn-Key’s JMOL motion with respect to anticipation and obviousness, which the district court justified solely by reference to Japanese Unexamined Application No. 148,082 (“JP ’082”). Because Koito merely entered the JP ’082 reference into evidence and provided no specific testimony relating to it whatsoever, we hold that Koito did not present substantial evidence with respect to JP ’082 to support the jury’s finding of anticipation and obviousness. On remand, the trial court should evaluate the other evidence proffered by Koito to determine whether the jury’s verdicts of anticipation and obviousness were adequately supported.

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