Federal Circuit: Koito Manufacturing v. Turn-Key-Tech (Patent Case)

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Koito Manufacturing v. Turn-Key-Tech (Fed. Cir. 2004) (PDF).

In February 2002, Koito brought a declaratory judgment action against Turn-Key, requesting that Turn-Key’s patent covering an injection molding technique be declared invalid, unenforceable, and not infringed. (< ?xml:namespace prefix ="" st1 />U.S. Patent 5,045,268). The Jury issued a special verdict finding the patent invalid for lack of enablement, written description, and the addition of new matter. Additionally, the Jury found that the patent was not infringed and that several claims were anticipated and obvious. After the verdict, however, the district court judge granted in-part Turn-Key’s JMOL.  On appeal, the Federal Circuit affirmed-in-part and remanded.  The Appellate Panel held that Koito had not met its burden of showing non-enablement, lack of written description, impermissible new matter, anticipation, or obviousness.

 We affirm (1) the jury’s verdict that Koito did not infringe the ’268 patent and (2) the district court’s grant of a JMOL with respect to the jury’s finding that the ’268 patent was not enabled, did not meet the written description requirement, and impermissibly added new matter.  However, we vacate the district court’s denial of Turn-Key’s JMOL with respect to anticipation and obviousness.  On remand, the district court should evaluate the evidence proffered by Koito … to determine whether the jury’s verdict of anticipation and obviousness was adequately supported.

Affirmed-in-part, Vacated-in-part, and Remanded.

Update:

The unanimous decision, which was returned by a three-judge panel on Monday, August 23, upheld an April 2003 jury verdict in the same case.  As in this case, the court found that the manufacturing process Koito used to mold plastic tail light lenses in no way infringed on a patent for another process that was held by Turn-Key-Tech. (LINK)