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Time Is of the Essence: Preserve Objections to the Jury Instructions

| Atiya M. MyersNicole R. Townes

HAFCO FOUNDRY AND MACHINE CO. v. GMS MINE REPAIR

Before Newman, Chen, and Stoll. Opinion filed per curiam.  Appeal from the Southern District of West Virginia.

Summary: Objections to jury instructions should be timely made at trial in order to be preserved for appeal at the Federal Circuit.

Hafco sued GMS for infringement of a design patent for a rock dust blower. A jury found GMS liable for willful infringement and awarded damages. The district court entered a permanent injunction against infringement. The district court also remitted the awarded damages to zero and offered a new trial on damages, but stayed the new trial pending the appeal. GMS appealed to the Federal Circuit and raised two issues: whether it is entitled to judgment as a matter of law on the issue of infringement; and, in the alternative, whether it is entitled to a new trial on the issue of infringement due to errors of law in the jury instructions.

The Federal Circuit affirmed the judgement of infringement. GMS included in its proposed jury instructions an instruction that a design patent only protects the non-functional aspects of the design.  However, this instruction was not included in the final jury instructions, and GMS did not object to the jury instructions or present evidence of the functional aspects of the design patent at trial. For the first time on appeal, GMS argued that when certain functional and prior art aspects of the design patent are excluded the design of GMS’ product does not infringe the design patent.  Because GMS did not make this non-infringement argument at the district court and did not present relevant evidence on the functional or prior art aspects of the design patent to the jury, GMS had not preserved this argument for appeal.

GMS also alleged two flaws in the jury instructions: (1) the instructions improperly abridged the Gorham test; and (2) the jury should have been instructed that the hypothetical purchaser is to view the patented and accused designs in the context of the prior art.  The Federal Circuit stated that “[o]bjection to the presence or absence of an instruction must be timely raised during the trial proceeding, and the correct instruction offered and rejected.”  A court may also consider a plain error in the instructions that has not been preserved if the error affects substantial rights.  GMS conceded that it did not raise its objections to the jury instructions at trial.  However, GMS argued that since the instructions were incorrect in law, it was entitled to a new trial. 

The jury instructions defined the ordinary observer as “a person who buys and uses the product at issue.”  On appeal, GMS argued that its rights were substantially affected by the district court’s failure to include a complete description of the ordinary observer.  However, GMS failed to identify any request for a different instruction on the ordinary observer or an explanation of the alleged flaw.  GMS also alleged that the jury should have been instructed to familiarize themselves with the prior art designs.  However, GMS failed to present any prior art during trial or submit a jury instruction regarding prior art.  Accordingly, the Federal Circuit held that GMS failed to timely preserve its objections to the jury instructions and therefore, they were waived. Further, the Federal Circuit found that the jury instructions did not seriously prejudice GMS or warrant a new trial.

Judge Newman concurred with the court’s decision as to the judgment of infringement and the request for a new trial due to the alleged errors in the jury instructions. However, Judge Newman dissented in part, arguing that a new trial on damages was not necessary because the appellate court could resolve the issue based upon the undisputed factual record.

Editor: Paul Stewart