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Justin E. Gray

IP Litigation Attorney at Foley & Lardner LLP

Former Adjunct Professor at Northwestern University School of Law

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Federal Circuit Finds Harmless Error in Submitting Claim Construction to the Jury

Alloc, Inc. v. Pergo, Inc. (Fed. Cir. Feb. 18, 2010) (nonprecedential)

In a puzzling case where the trial court had referred claim construction to the jury, the Federal Circuit affirmed the district court's findings that the two patents-in-suit were invalid but not unenforceable due to inequitable conduct.  The patents related to mechanical joints that enable flooring panels to be joined without the use of glue or other fasteners, such as nails or metal clips.

The Federal Circuit first found that the prior art references "were more than sufficient to support the jury's finding of obviousness."  It then noted that "although we need not reach the infringement analysis, we note that the district court surprisingly presented the claim construction to the jury.  Claim construction has always been a legal issue for the court and not within the fact-finding role of a jury.  The district court's submission of the claim construction to the jury, leaving the jury free to make its own determination of the meaning of the claims, was error.  Here the error is harmless due to our obviousness ruling but the district court's procedure is not one supported by the law."  (internal citations omitted).

This is a puzzling result.  If the district court improperly allowed the jury to decide claim construction issues, the jury then improperly decided those issues for purposes of both infringement and validity.  It appears that any such "error" should apply to both infringement and validity and cannot be rendered "harmless due to our obviousness ruling."  Of course, if the Federal Circuit had explicitly determined that the patent claims were obvious under any reasonable construction of the claims, a finding of "harmless error" may be appropriate, but there was no such explicit finding here.

Upon further research into this case, it appears that two potential claim construction issues were presented to the jury regarding the claim terms "tight" and "tongue."  For the term "tight", the district court judge appears to have instructed the jury that "[t]he term 'tight joint' means that neither dirt nor water may penetrate the joint.  With respect to water, 'tight' joint means that standing water will not penetrate the joint for several hours."  However, in the verdict form the jurors were asked "[w]hat criteria did you use to determine whether the joints Accused Products are 'tight'?" and were given two options: "[p]enetrate means that neither water nor dirt pass into the joint" or "[p]enetrate means that neither water nor dirt pass through the joint."

Similarly, for the term "tongue", the district court judge appears to have instructed the jury that "the term 'tongue' means a portion of the panel that is designed to mate with a groove of an adjacent panel."  However, in the verdict form the jurors were asked "[w]hat criteria did you use to determine the presence or absence of a protrusion or snapping web on the tongue?" and were given two options: "[t]he tongue includes the tongue side of the panel" or "[t]he tongue includes only the part that extends outwardly from the upper edge."

Arguably, it appears that the jury's determination of whether the term "tight" means that neither water nor dirt pass "into the joint" versus "through the joint" does appear, on its face, to be a claim construction issue.  Conversely, the jury's determination of what part of the accused products comprise the "tongue" is arguably more of a factual issue.  Unfortunately, the Federal Circuit did not specifically point out what portion of the verdict it found to be improper claim construction by the jury.  It is intriguing that these instructions appear to have been proposed by one of the parties with no objection from the other party or by the judge.