David C. Gavin, Plaintiff-appellee, v. Star Brite Corporation, Third Party Defendant-appellant, v. Edwardian Enterprises, Inc., D/b/a Buster's Marine, Defendant, 865 F.2d 269 (Fed. Cir. 1988)

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U.S. Court of Appeals for the Federal Circuit - 865 F.2d 269 (Fed. Cir. 1988) Dec. 21, 1988

Before MARKEY, Chief Judge, FRIEDMAN and RICH, Circuit Judges, SKELTON and BALDWIN, Senior Circuit Judges, and EDWARD S. SMITH, NIES, PAULINE NEWMAN, BISSELL, ARCHER, MAYER and MICHEL, Circuit Judges.* 

BISSELL, Circuit Judge.


The judgment of the United States District Court for the Northern District of Mississippi, EC 84-75-D-D, finding, inter alia, that Star Brite infringed Gavin's United States Patent No. 4,181,622 ('622), permanently enjoining Star Brite, among others, from infringing the '622 patent and assessing actual compensatory damages and prejudgment interest against Star Brite, is affirmed.


The parties stipulated that Gavin's patent was valid and that Star Brite's product was the substantial equivalent of Gavin's claimed composition except as limited by prosecution history estoppel. A jury trial was held. The district court directed a verdict of infringement, but submitted two special interrogatories to the jury--the amount of actual damages caused by Star Brite's infringement and whether the infringement was willful. The jury answered "$214,850 (25%)" to the damages interrogatory and "Yes" to the willful infringement interrogatory. The district court refused to disturb the jury's assessment of damages and, although the jury had found willful infringement, refused to increase the damages or award attorney fees to Gavin. Star Brite appeals the judgment entered on the directed verdict of infringement and challenges the amount of the damage award.

The district court did not err in directing the infringement verdict because, on this factual issue, no reasonable jury could have found that Gavin had surrendered, through prosecution history estoppel, a range of equivalents that would have resulted in noninfringement. See A. Stucki Co. v. Worthington Indus., 849 F.2d 593, 595, 7 USPQ2d 1066, 1067 (requiring affirmance of a directed verdict unless a reasonable jury could have found otherwise).

Notwithstanding Star Brite's arguments to the contrary, we must only determine whether the jury verdict on damages was supported by substantial evidence. See Allen Organ Co. v. Kimball Int'l, Inc., 839 F.2d 1556, 1566, 5 USPQ2d 1769, 1777 (Fed. Cir.), cert. denied, 109 S. Ct. 132 (1988). The jury considered the royalty rate of 5% from unsuccessful prior negotiations between the parties, Star Brite's 4% overall profitability rate, and expert testimony that a reasonable royalty would be 30% of sales. Thus, the jury had before it "such relevant evidence from the record taken as a whole as might be accepted by a reasonable mind as adequate to support the finding under review." Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 893, 221 USPQ 669, 673 (Fed. Cir.), cert. denied, 469 U.S. 857 (1984). The jury's assessment of a 25% royalty as damages, accordingly, is supported by substantial evidence.

SKELTON, and BALDWIN, Senior Circuit Judges, and NEWMAN, Circuit Judge, concur in result.

MAYER, Circuit Judge, concurs in judgment.


This appeal was argued before a panel consisting of MAYER, Circuit Judge, SKELTON and BALDWIN, Senior Circuit Judges, on March 9, 1988. In accordance with the request of members of the court, the appeal is resolved in banc