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Keywords

attorneytrialburden of proofpatenttrademarkjury trialjury instructions
appealtrialburden of proofpatentjury instructions

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American Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 220 U.S.P.Q. 763

Facts

American Hoist & Derrick Company (AmHoist) brought a patent infringement suit against Sowa & Sons, Inc. (Sowa) regarding claims 3, 5, and 7 of its U.S. Patent No. 4,079,584 for a heavy-duty shackle. After a jury trial, the jury found the claims invalid for obviousness and for fraud in the prosecution of those claims in the Patent and Trademark Office (PTO). The district court upheld the jury's findings but also determined that the jury instructions were erroneous, leading to a vacated judgment and a remand for a new trial.

American Hoist & Derrick Company (AmHoist) appeals from the unpublished decision of the United States District Court for the District of Oregon holding for Sowa & Sons, Inc. (Sowa) on AmHoist's suit for infringement of claims 3, 5, and 7 of its Shahan U.S. Patent No. 4,079,584, issued March 21, 1978, for a 'Heavy Duty Shackle.'

Issue

Did the trial court err in its jury instructions regarding the burden of proof for nonobviousness and the handling of fraud allegations in the patent prosecution?

Did the trial court err in its jury instructions regarding the burden of proof for nonobviousness and the handling of fraud allegations in the patent prosecution?

Rule

Analysis

The trial court's instructions misassigned the burden of proof to the patentee when it stated that if the attacker introduced more pertinent prior art than that considered by the PTO, the burden shifted to the patentee. This contradicts the established rule that the burden of proving invalidity always lies with the attacker. Additionally, the court failed to accurately explain the presumption of validity, which is a critical aspect of patent law. The jury's findings of fraud were also based on erroneous instructions that did not properly guide them on the necessary elements of fraud.

Conclusion

The court concluded that the jury instructions were erroneous, leading to a vacated judgment and a remand for a new trial.

Because of erroneous jury instructions, and because there exist disputed issues of fact, we vacate and remand for a new trial.

Who won?

Sowa & Sons, Inc. prevailed in the case as the jury found the patent claims invalid and determined that AmHoist committed fraud on the Patent Office. The district court recognized Sowa's success in invalidating the patent as significant not only for Sowa's interests but also for the public interest, justifying an award of attorney fees to Sowa despite the court's decision to reduce the requested amount.

A jury determined that AmHoist's patent was invalid. On each claim of the patent in issue, the jury determined that AmHoist committed fraud on the Patent Office.

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