Mobil Oil Corp. v. Advanced Environmental Recycling Technologies, Inc.

869 F. Supp. 258, 1994 U.S. Dist. LEXIS 21838, 1994 WL 673706
CourtDistrict Court, D. Delaware
DecidedMay 20, 1994
DocketCiv. A. No. 92-351-JJF
StatusPublished
Cited by1 cases

This text of 869 F. Supp. 258 (Mobil Oil Corp. v. Advanced Environmental Recycling Technologies, Inc.) is published on Counsel Stack Legal Research, covering District Court, D. Delaware primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Mobil Oil Corp. v. Advanced Environmental Recycling Technologies, Inc., 869 F. Supp. 258, 1994 U.S. Dist. LEXIS 21838, 1994 WL 673706 (D. Del. 1994).

Opinion

MEMORANDUM OPINION

FARNAN, District Judge.

I. INTRODUCTION

Presently before the Court is AERT’s Motion for a New Trial filed pursuant to Rule 59 of the Federal Rules of Civil Procedure. AERT and Mobil both manufacture composite wood products from recycled plastic and wood fiber. On June 9, 1992, Mobil sued AERT for a declaratory judgment that four of AERT’s composite product patents are invalid, unenforceable and not infringed upon by Mobil. AERT counterclaimed, alleging antitrust violations, Lanham Act violations, breach of confidential relationship and patent infringement. The Court bifurcated the patent issues, which were tried to a jury.

The jury found that Mobil did not infringe AERT’s patents and that all four patents were invalid because they were obvious and anticipated by the prior art. The jury also found, in response to interrogatories, that the inventors and their attorneys failed to disclose material information and made material misrepresentations to the United States Patent and Trademark Office with the intent to deceive.

II. DISCUSSION

AERT asserts three grounds in support of its motion for a new trial: (1) Mobil misrepresented the law of disclosure by arguing to the jury AERT was required to disclose all similar technology to the Patent Office, (2) Mobil misrepresented the facts to the jury by arguing that AERT could not get a patent once it disclosed Hearthbrite to the Patent Office, and (3) the jury verdict was prejudiced by the alleged repeated assertions of personal opinion by Mobil’s counsel. AERT argues that the three types of Mobil misconduct alone or together render it “reasonably probable” that the jury verdict was improperly influenced, and have caused a miscarriage of justice that only a new trial can remedy. AERT argues that Mobil’s misconduct not only affected the jury’s findings with regard to inequitable conduct, but “inexorably affected the jury’s decision on all issues.” Opening Brief, at 26.

A. Legal Standard

The United States Court of Appeals for the Third Circuit has articulated the standard by which district courts are to exercise their discretion in granting new trials. The Court must ascertain whether the alleged improper conduct has made it “reasonably probable” that the verdict was influenced by the prejudicial conduct, such that a miscarriage of justice would result if a new trial were not granted. Fineman v. Armstrong World Indus., Inc., 980 F.2d 171, 207 (3d Cir.1992) (citing Draper v. Airco, 580 F.2d 91, 94 (3rd Cir.1978)), cert. denied, — U.S. -, 113 S.Ct. 1285, 122 L.Ed.2d 677 (1993). A “[district court’s power to grant a new trial motion is limited to those circumstances ‘where a miscarriage of justice would result if the verdict were to stand.’ ” Olefins Trading, Inc. v. Han Yang Chem. Corp., 9 F.3d 282, 289 (3d Cir.1993) (quoting Fineman, 980 F.2d at 211). AERT must not only establish improper conduct on the part of Mobil, AERT must also demonstrate that the jury verdict was prejudiced by the improper conduct.

B. Inequitable Conduct Findings

To the extent that AERT is arguing that a new trial is warranted based upon the preju[260]*260dicial impact Mobil’s misconduct had on the jury’s inequitable conduct findings, the Court will deny the motion. The Court submitted the inequitable conduct issues to the jury for advisory findings only. Although the Court finds that there was no prejudice caused by the alleged misconduct, even if there were, its impact on the jury’s findings on inequitable conduct is inconsequential. Therefore, the Court will only address AERT’s arguments as they pertain to the prejudicial impact the alleged misconduct may have had on the jury’s findings of obviousness and anticipation.

C. Invalidity Findings

Even if Mobil’s conduct were improper, the Court finds that the alleged improper conduct could not have prejudiced the jury’s verdict. The jury did not rely solely on the Hearthbrite information to find that all four of AERT’s patents are invalid as obvious. The jury cited a multitude of other prior art references to support its findings.

The jury’s invalidity findings based upon obviousness with regard to the ’910 patent were supported by six references other than Hearthbrite, including two patents and four printed publications. With regard to the ’605 patent, the jury cited five references other than Hearthbrite to support its finding of obviousness. The jury did not cite Hearthbrite at all in finding the ’046 patent invalid. Finally, the jury’s finding that the ’406 patent would have been obvious was supported by six references other than Hearthbrite.

Aside from the jury’s obviousness findings, the jury also found that one or more of the claims in each of the four patents was described in a printed publication in this or a foreign country, publicly used, offered for sale, or sold more than one year prior to the date of application for the patent and that one or more of the claims in each of the four patents was known or used by persons other than the inventors prior to the date of the inventions.

Moreover, the jury found a wholly separate ground for finding inequitable conduct, i.e. AERT’s misrepresentation to the patent office that the “Erb patent (using leaves) was foundation of AERT’s process.” Each of the jury’s remaining findings independently support the jury’s invalidity verdict and unenforceability advisory findings notwithstanding the alleged prejudicial impact of Mobil’s statements related to Hearthbrite. In light of the scope and detail of the jury’s findings, the Court finds that the jury was not prejudiced by the isolated statements of counsel alleged here.

Notwithstanding that the jury had several independent grounds upon which it invalidated AERT’s patents, the Court is not convinced in the first instance that a miscarriage of justice has resulted from the alleged misconduct on the part of Mobil. The first manner in which Mobil is alleged to have prejudiced the jury verdict is by persistently misrepresenting to the jury that AERT and its attorneys were required to disclose “all similar technology.” AERT contends this misled the jury to conclude that AERT withheld material information from the Patent Office, with an intent to deceive and that every AERT patent was invalid over Hearthbrite.

At the outset of trial and again during closing instructions, the Court informed the jury that counsels’ statements of the law were not to be followed, but that the jury was to follow the instructions on the law given by the Court. There is no evidence that the jury failed to heed the Court’s instructions. The fact that the jury, in response to Interrogatory Number 23 regarding intent to deceive the Patent Office, cited AERT’s failure to disclose Hearthbrite to the Patent Office as “similar technology” does not indicate that the jury failed to follow the Court’s instructions.

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Bluebook (online)
869 F. Supp. 258, 1994 U.S. Dist. LEXIS 21838, 1994 WL 673706, Counsel Stack Legal Research, https://law.counselstack.com/opinion/mobil-oil-corp-v-advanced-environmental-recycling-technologies-inc-ded-1994.