Newell Companies, Inc. v. Kenney Manufacturing Company, Defendant/cross-Appellant

864 F.2d 757

• Court: Court of Appeals for the Federal Circuit
• Decided: March 15, 1989
• Docket: 85-2232, 86-711, 86-742 and 86-1018
• Status: Published

Opinions

NIES, Circuit Judge.

Newell Companies, Inc., appeals from the judgment of the United States District Court for the District of Rhode Island, 606 F.Supp. 1282, 226 USPQ 157 (D.R.I.1985) (Boyle, C.J.), in a patent infringement suit brought against Kenney Manufacturing Company. Following a jury trial in which the jury answered interrogatories responding, inter alia, that no claims in issue of United States Patent No. 4,006,770 (the ’770 patent), owned by Newell, were proved invalid for obviousness under the standard of 35 U.S.C. § 103 (1982), the district court granted Kenney’s reserved motion for directed verdict and entered judgment for Kenney on that issue holding claims 1, 2, 6 and 7 invalid. We affirm.

I

Background

The invention of the '770 patent relates to retractable (up and down) window shades. Ferguson, the inventor, was products manager of Newell’s window shade division, and developed the shade after seeing certain vinyl shade material manufactured by Sean Corcoran. Corcoran’s material is scored partially through in lines parallel to one lengthwise edge so that it can be torn to a desired width. Its advantage over other scored shade materials is that light does not shine through the scored portion.

Corcoran sought a patent which claimed his shade material in combination with a roller, and in In re Corcoran, 640 F.2d 1331, 208 USPQ 867 (CCPA 1981), a predecessor of this court addressed the patenta-bility of Corcoran’s invention. Because the Corcoran material had been placed on sale in the United States in 1972, more than a year before the filing date of Corcoran’s application, and the combination with a roller would have been obvious, Corcoran was held to have lost his right to a patent under 35 U.S.C. § 102(b)/§ 103 (1982). Specifically, the court stated:

As to the support means we conclude that, given the plastic sheet shade material denominated a “window shade,” nothing could be more obvious than to attach it to a roller or other support.

Id. at 1334, 208 USPQ at 870. The Corcor-an material alone or in combination with a roller, thus, was unprotectable and freely available for anyone to use.

After learning of the Corcoran material in late 1973 or early 1974, Ferguson, sensing the market potential, contacted Corcoran, who resided in Ireland, and requested sample shades. Corcoran sent the shades along with a letter explaining that he would not have the output to supply Newell until 1975 and that at the time rollers were in better supply and cheaper in America. This correspondence led to meetings and eventually to a business arrangement between Corcoran and Newell. Ferguson proceeded to develop the subject matter of the ’770 patent, which attaches the Corcoran material to a telescoping roller having a smaller section able to slide inside a larger section.

Ferguson claims the advantage that his shade can be assembled by consumers without the use of tools. As explained in the specification, the material is affixed to the larger roller section. After adjusting the width of the material and roller, the consumer removes a protective cover on an adhesive strip on the smaller roller end and presses the material onto that adhesive. In conducting test marketing, Newell made shades from material supplied by Corcoran and from telescoping rollers available on the market and made by Clopay Corporation. As described infra, the Clopay roller came with a cardboard sleeve which fitted over its smaller telescoping end. That sleeve was unnecessary in the Ferguson assembly and was simply discarded. The Clopay roller is the subject of United States Patent No. 3,203,468 (the ’468 patent), issued to Gossling and owned by Clo-pay.

Shortly thereafter, Ferguson applied for the patent which is the subject of this suit. Claim 1 of the ’770 patent, which issued to Ferguson in February 1977, reads:

In an extensible and retractable roll window shade assembly which is width adjustable and installable by the consumer without the use of tools or cutting elements, the combination of a telescoping roller assembly, said telescoping roller assembly including a first roller section, said first roller section having a constant external diameter from end portion to end portion, the outer end portion of said first roller section having first means for supporting the window shade assembly from a first support location, the inner end portion of said first roller section having an opening therein of a size to receive a second roller section, said second roller section having a constant nominal external diameter from end portion to end portion, the outer end portion of said second roller section having second means for supporting the window shade assembly from a second support location, said second roller section being telescopically, slidably received within the first roller section whereby the length of the roller assembly can be adjustable within the limits of the range of telescoping movement, means for precluding relative rotation between the first and second roller sections, a shade of flexible sheet material, a first portion of the upper end of the shade being secured to the first roller section, one side portion of the shade having a plurality of lines of weakness which extend from the upper end of the shade to the lower end of the shade whereby the width of the shade can be adjusted to a desired width by separating a portion of the side of the shade from the balance of the shade, said separated portion being bounded, on the outside, by the original shade edge and, on the inside, by a line of weakness along which said portion is separated from the balance of the shade, said first and second telescoping roller sections being adjustable to an overall length which is at least as wide as the length of the final shade width without severance of any portion of either section, securement means for securing the second portion of the upper end of the shade, which is generally aligned with the second roller section, in fixed relationship to the second, smaller external diameter roller section with a substantially constant securing force from point to point along the length of the portion of the second roller section which extends beyond the end of the first roller section, whereby the positions of the first and second roller sections are fixed with respect to one another and to the shade throughout the entire area of overlap of the shade and the roller assembly.

The Newell window shade was successful with consumers immediately on its introduction into full marketing in October 1975. Other shade companies introduced competing products. In July 1981, Ken-ney’s do-it-yourself shade appeared in response to the requirements of its customer, K-Mart. The Kenney shade was made with scored material and a telescoping roller but, unlike Ferguson’s design, the shade material was attached to the larger roller section only and was simply allowed to wrap loosely around the smaller end.

At trial, Kenney asserted numerous defenses, but the dispositive issue here is whether the ’770 invention would have been obvious from prior art which includes the Corcoran material, telescoping rollers, and various means for securing a shade to a roller including adhesive strips and partial securement as in the Kenney shade. At the conclusion of presentation of evidence, both parties moved for a directed verdict on which the district court reserved its rulings, and the case was submitted to the jury. In its instructions, the court directed the jury to answer a series of questions, including a question whether any of the claims of Newell’s ’770 patent would have been obvious, to which the jury answered “No,” and whether Kenney infringed any claims, to which the jury answered “Yes.” After receipt of the jury’s verdict in this form, the court made its rulings on the parties’ motions for directed verdict, denying Newell’s and granting Kenney’s.¹ The district court set out in detail a set of facts and explained the basis for its decision holding claims 1, 2, 6, and 7 unpatentable under 35 U.S.C. § 103, that is, the court concluded from this set of facts that the invention would have been obvious to one of ordinary skill in the art.² The court also held that the jury’s verdict was not reasonable. Newell appeals the grant of judgment for Kenney.

After entry of judgment, Kenney moved for attorney fees. The court denied that motion and Kenney cross-appeals the denial of attorney fees.³

II

Issues in Newell’s Appeal

The dispositive issue in Newell’s appeal is whether the trial court erred in setting aside the jury’s verdict of nonobviousness of the subject invention. Newell does not challenge the trial court’s statement of the facts underlying the trial court’s obviousness conclusion except in an immaterial detail. Newell’s challenge is two-fold. First, it argues that the trial court improperly substituted its conclusion on obviousness for that of the jury and second it argues that, in any event, the subject invention meets the statutory standard of section 103. We deal with these arguments in turn.

III

Standard of Review of the Grant of Directed Verdict or JNOV

The first issue raised by Newell presents the question whether a litigant is entitled to a jury verdict on a disputed issue of obviousness where there are no disputed issues of material fact underlying that issue. In Hepner v. United States, 213 U.S. 103, 29 S.Ct. 474, 53 L.Ed. 720 (1909), which upheld the grant of a directed verdict and was reaffirmed in Tull v. United States, 481 U.S. 412, 107 S.Ct. 1831, 95 L.Ed.2d 365 (1987), the Court stated:

The objection made in behalf of the defendant, that an affirmative answer to the question certified[⁴] could be used so as to destroy the constitutional right of trial by jury,* is without merit and need not be discussed. The defendant was, of course, entitled to have a jury summoned in this case, but that right was subject to the condition, fundamental in the conduct of civil actions, that the court may withdraw a case from the jury and direct a verdict, according to the law if the evidence is uncontradicted and raises only a question of law.

Restricting our decision to civil cases, in which the testimony is undisputed, and without qualifying former decisions requiring the court to send a case to the jury, under proper instructions as to the law, where the evidence is conflicting on any essential point, we answer the question here certified in the affirmative.

213 U.S. at 115, 29 S.Ct. at 479-80.

All of our precedent holds that, where the only issue is, as here, the application of the statutory standard of obviousness (35 U.S.C. § 103) to an established set of facts, there is only a question of law to be resolved by the trial judge, and that the trial court’s conclusion on obviousness is subject to full and independent review by this court.

In a case directly on point in ruling on a JNOY motion, Medtronic, Inc. v. Intermedics, Inc., 799 F.2d 734, 738, 230 USPQ 641, 643 (Fed.Cir.1986), cert. denied, 479 U.S. 1033, 107 S.Ct. 882, 93 L.Ed.2d 836 (1987), Judge Davis stated the law in exemplary fashion as follows:

On this appeal, Intermedies does not contest the Graham factual inquiries stipulated by the parties or decided by the jury; rather, Intermedies disputes only the ultimate conclusion of nonob-viousness with respect to claims 1 and 7 of the C/D patent. Obviousness is a question of law. In reviewing a District Court’s refusal to grant JNOV, it is the duty of this court to be satisfied that the law has been correctly applied to the facts found. Structural Rubber Products, 749 F.2d at 719, 223 USPQ at 1273; Railroad Dynamics, Inc., 727 F.2d at 1512, 220 USPQ at 936.

Similarly, Structural Rubber Products Co. v. Park Rubber Co., 749 F.2d 707, 223 USPQ 1264 (Fed.Cir.1984) held:

The introduction of a jury can not change the nature of the obviousness decision. It continues to be a legal issue for the court. Indeed, the role of a trial court should not be significantly different in a patent jury trial from its role in a patent bench trial with respect to legal issues. On appeal, the standard of review applied by an appellate court to factual issues is affected by the different type of trial. Findings of fact by the jury are more difficult to set aside (being reviewed only for reasonableness under the substantial evidence test) than those of a trial judge (to which the clearly erroneous rule applies). But the standard of review of the conclusion on obviousness remains the same — it is a question of law. Thus, it is the duty of the appellate court to be satisfied that the law has been correctly applied to the facts regardless of whether the facts were determined by judge or jury.

Id. at 718-19, 223 USPQ at 1273 (footnote omitted). See also White v. Jeffrey Mining Mach. Co., 723 F.2d 1553, 1558-60, 220 USPQ 703, 705-07 (Fed.Cir.1983) (reversed denial of JNOY where “the parties are in substantial agreement on the facts bearing on the question of obviousness”), cert. denied, 469 U.S. 825, 105 S.Ct. 104, 83 L.Ed.2d 49 (1984); American Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1361, 220 USPQ 763, 772 (Fed.Cir.1984) (remanded because “[a] district court may not solicit only a legal conclusion [on obviousness] from the jury”).

Our precedent on summary judgment motions, which are decided under essentially the same standard as that for a motion for directed verdict or JNOV, Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250, 106 S.Ct. 2505, 2511, 91 L.Ed.2d 202 (1986), is in accord with the above decisions. In that connection we have held that where the ultimate legal conclusion of obviousness is disputed, but not the underlying facts, there is no issue of fact requiring a trial, even though some facts favor obviousness, some nonobviousness. See, e.g., Union Carbide Corp. v. American Can Co., 724 F.2d 1567, 220 USPQ 584 (Fed.Cir.1984); Chore-Time Equip., Inc. v. Cumberland Corp., 713 F.2d 774, 218 USPQ 673 (Fed.Cir.1983). This is so even in a case where a jury is demanded, because it is not the function of the jury to pick and choose among established facts relating to obviousness in contrast to its obligation to sift through conflicting evidence and determine what those facts are. On the other hand, where there appears to be a genuine evidentiary conflict over an underlying material fact, the grant of summary judgment is inappropriate. See, e.g., Finish Eng’g Co. v. Zerpa Indus., Inc., 806 F.2d 1041, 1 USPQ2d 1114 (Fed.Cir.1986). At times, no doubt, “the issues may be such that only after the agony of a full-blown trial may it authoritatively be determined that there was never really the decisive issue of fact at all.” Robbins v. Milner Enters., Inc., 278 F.2d 492, 497 (5th Cir.1960). But there is no question that the court may take the issue from the jury on a directed verdict or JNOV motion at least in the same circumstances where it could have granted summary judgment. See Anderson, 477 U.S. at 250, 106 S.Ct. at 2511; 5A J. Moore & J. Lucas, Moore’s Federal Practice 11 50.03[4] at 50-38 to -39 (2d ed.1988); 9 C. Wright & A. Miller, Federal Practice & Procedure: Civil § 2532 at 578 (1971).

All the above merely reflects that a party has a right to a jury trial in an action at law, not a right to a jury verdict. A jury verdict need not be obtained and may be set aside under the common law principles incorporated into the Constitution where there is no fact issue for the jury to decide.⁵ The authority of the judge to rule on issues of law during the course of proceedings is an essential element of a jury trial.

As explained in Herron v. Southern Pacific Co., 283 U.S. 91, 95, 51 S.Ct. 383, 384, 75 L.Ed. 857 (1931):

In a trial by jury in a federal court, the judge is not a mere moderator, but is the governor of the trial for the purpose of assuring its proper conduct and of determining questions of law. This discharge of the judicial function as at common law is an essential factor in the process for which the Federal Constitution provides ....

“Trial by jury,” said the court in Capital Traction Co. v. Hof, 174 U.S. 1, 13, 14 [19 S.Ct. 580, 585, 585-86, 43 L.Ed. 873 (1899)], “in the primary and usual sense of the term at the common law and in the American constitutions, is not merely a trial by a jury of twelve men before an officer vested with authority to cause them to be summoned and empan-elled, to administer oaths to them and to the constable in charge, and to enter judgment and issue execution on their verdict; but it is a trial by a jury of twelve men in the presence and under the superintendence of a judge empowered to instruct them on the law and to advise them on the facts, and (except on acquittal of a criminal charge) to set aside their verdict if in his opinion it is against the law or the evidence.” See, also, United States v. Philadelphia & Reading R. Co., 123 U.S. 113, 114 [8 S.Ct. 77, 77-78, 31 L.Ed. 138 (1887)]; Patton v. United States, 281 U.S. 276, 288, 289 [50 S.Ct. 253, 254, 254-55, 74 L.Ed. 854 (1930)].

See also St. Louis v. Praprotnik, — U.S. -, 108 S.Ct. 915, 925, 99 L.Ed.2d 107 (1988); Miller v. Fenton, 474 U.S. 104, 112-14, 106 S.Ct. 445, 451-52, 88 L.Ed.2d 405 (1985); Galloway v. United States, 319 U.S. 372, 389-92, 63 S.Ct. 1077, 1086-88, 87 L.Ed. 1458 (1943); Dimick v. Schiedt, 293 U.S. 474, 486, 55 S.Ct. 296, 301, 79 L.Ed. 603 (1935); Sparf & Hansen v. United States, 156 U.S. 51, 80-82, 15 S.Ct. 273, 284-285, 39 L.Ed. 343 (1895); United States v. Articles of Drugs: 5906 Boxes, 745 F.2d 105, 112-13 (1st Cir.1984) (Stewart, J., Ret.). Had the trial court failed to exercise that authority here,⁶ a constitutional jury trial would have been denied, not upheld.

Notwithstanding the above precedent, Newell finds support in some decisions of this court for its argument that the district court improperly substituted its determination of obviousness for that of “reasonable jurors,” namely this court's opinions in Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 221 USPQ 669 (Fed. Cir.), cert. denied, 469 U.S. 857, 105 S.Ct. 187, 83 L.Ed.2d 120 (1984); Railroad Dynamics, Inc. v. A. Stucki Co., 727 F.2d 1506, 220 USPQ 929 (Fed.Cir.), cert. denied, 469 U.S. 871, 105 S.Ct. 220, 83 L.Ed.2d 150 (1984); and Connell v. Sears Roebuck & Co., 722 F.2d 1542, 220 USPQ 193 (Fed.Cir.1983). In particular, Newell points to statements in Connell that “it is not error to submit the question of obviousness to the jury,” Connell, 722 F.2d at 1547, 220 USPQ at 197, and that “[j]ury verdicts must be treated with great deference,” id. at 1546, 220 USPQ at 196. Newell fails to note that in Connell this court affirmed the setting aside of a jury verdict of nonob-viousness of the invention. Newell also fails to note the entirety of the court’s statement in Connell. This court held in Connell that, although it is not error to submit the obviousness/nonobviousness issue to the jury, “it is ultimately a question of law decidable by the court in response to a motion for JNOV.” Id. at 1550, 220 USPQ at 200. It must also be pointed out that Connell involved submission of the obviousness issue where there were material, factual disputes, not submission of that issue where no underlying facts are in dispute (“the facts underlying the jury’s non-obviousness conclusion were not supported by substantial evidence,” id. at 1548, 220 USPQ at 198).

Were we to adopt Newell’s argument that, where no facts are in dispute, Con-nell requires that obviousness be determined by the opinion of reasonable jurors on whether the statutory standard of section 103 was or was not satisfied, our decisions in Medtronic, Structural Rubber, and White, among others, would be in direct conflict with Connell. By the same token, Connell would then be in conflict with our prior summary judgment and bench trial rulings which hold that the ultimate conclusion of obviousness, that is, the application of the statutory standard to a set of facts, is an issue of law, and like any other issue of law is subject to independent plenary review and determination by this court.⁷

This court has adopted the rule that prior decisions of a panel of the court are binding precedent on subsequent panels unless and until overturned in banc. See UMC Elecs. Co. v. United States, 816 F.2d 647, 652 n. 6, 2 USPQ2d 1465, 1468 n. 6 (errata) (Fed.Cir.1987), cert. denied, — U.S. -, 108 S.Ct. 748, 98 L.Ed.2d 761 (1988). Where there is direct conflict, the precedential decision is the first. Even if all comments in the decisions considered here are not completely harmonious, New-ell points to no actual conflict, and we see none. Nothing said in Structural Rubber, Medtronic, or in any other prior decision, or in this opinion, should be interpreted to mean that because a court must make its independent decision on the ultimate issue of obviousness, a court can also make its own factual findings on that issue independent of the jury. A jury's resolution of evidentiary conflicts to establish the facts is the essence of its role in a jury trial. Judges must accept the factual findings, presumed from a favorable jury verdict, which are supported under the substantial evidence/reasonable juror standard. See Structural Rubber, 749 F.2d at 719, 223 USPQ at 1273; Medtronic, 799 F.2d at 738, 230 USPQ at 643. Those opinions do not depart from the holding in Connell. Where the case turns on resolution of a factual issue, the issue of obviousness may be given to the jury with proper instructions.⁸

Conversely, nothing said in Connell, Railroad Dynamics, or Perkin-Elmer entitles Newell to a jury verdict where there is no genuinely or substantially disputed issue of material fact underlying the obviousness determination. In that instance, there is only an issue of law for the trial court to resolve and that court’s conclusion is subject to plenary review in this court.

Significant to an understanding of our precedent is that a number of earlier appeals in jury cases had been tried under the law of certain circuits’ precedent which held that obviousness was a question of fact.⁹ In such circuits the jury was not infrequently asked to answer the question of obviousness in a special fact verdict under Rule 49(a) of the Federal Rules of Civil Procedure.¹⁰ In any appeal, of course, an appellate court must decide whether the ultimate judgment can be sustained. Any error must be harmful. Thus, when the parties presented the case to this court in a manner which defined appropriate issues for resolution, this court proceeded to resolve those issues. Procedural errors that do not unfairly affect the outcome are to be ignored. Trials must be fair, not perfect. See Fonar Corp. v. Johnson & Johnson, 821 F.2d 627, 633, 3 USPQ2d 1109, 1114 (Fed.Cir.1987), cert. denied, — U.S. -, 108 S.Ct. 751, 98 L.Ed.2d 764 (1988). This is such a case. Giving the jury a direct question to answer on the legal issue of obviousness was technically a violation of Rule 49(a), but harmless here. Newell does not challenge the statement in the trial court’s opinion as to the underlying material facts. Thus, the issue presented to us is solely a legal question we may decide, specifically, whether the statutory standard of obviousness “has been correctly applied to the facts found.” Medtronic, 799 F.2d at 738, 230 USPQ at 643. See also Kungys v. United States, — U.S. —, 108 S.Ct. 1537, 1547, 99 L.Ed.2d 839 (1988) (“materiality under [8 U.S.C.] § 1451(a) is an issue of law, which we may decide for ourselves”). Accordingly, we turn to the merits of the court’s ruling holding the ’770 patent invalid under section 103.

IV

The District Court Correctly Held That Invention of the 770 Patent Would Have Been Obvious

The district court began its obviousness analysis by delineating the obviousness standard, as set forth in Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 693-694, 15 L.Ed.2d 545 (1966), and the significance of “secondary considerations” as interpreted in Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538-39, 218 USPQ 871, 879 (Fed.Cir.1983), and Environmental Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 695, 218 USPQ 865, 867 (Fed.Cir.1983), cert. denied, 464 U.S. 1043, 104 S.Ct. 709, 79 L.Ed.2d 173 (1984). The court further stated that it was mindful of the presumption of validity and that Kenney bore the burden of establishing facts, by clear and convincing evidence, which established invalidity, citing Perkin-Elmer, 732 F.2d at 894, 221 USPQ at 674.

The court noted that the Corcoran material and shade design, which had not been considered by the PTO examiner, were pri- or art; also, that Corcoran contemplated using a roller which could be adjusted (albeit by cutting) to conform to the adjusted width of the shade material.

The court noted that numerous prior patents showed telescoping rollers adjustable in width to which window shade material was attached. It particularly analyzed the United States patents to Gossling, No. 3,203,468 and No. 3,299,944, for window shades with adjustable, telescoping rollers. In both, the shade material is adhesively secured directly to the larger roller section as in the claims, sub judice. They also disclose that the material extending over the smaller roller section can be kept from drooping by adhesively affixing it to a cardboard sleeve over the smaller roller section or by discarding the sleeve and providing extra rolls of material to form a tube-like structure around the smaller roller section.¹¹

The court noted that no single item of prior art specifically covered a shade using the improved Corcoran-type, scored, vinyl material on a telescoping roller. Gossling ’468 and ’944, for example, show mounting cuttable cloth fabric on a telescoping roller. However, there was evidence that others of ordinary skill in the art had, prior to Ferguson’s invention, proposed securing other, less satisfactory, strippable, shade material to telescoping rollers to achieve do-it-yourself adjustability without tools.¹² In sum, the court concluded, however, that “[gjiven the nature of the [Corcoran] material, it would have been obvious to one with ordinary skill in the art to mount that shade material on a telescoping roller, well known in the art, which could be quickly shortened to match the width of the shade. Like the Corcoran court [ (the CCPA) ], this Court feels that ‘... nothing could be more obvious_’ " Newell, 606 F.Supp. at 1296, 226 USPQ at 166.

In reaching the conclusion that the invention of the ’770 patent would have been obvious, the trial court gave deference to the presumption of validity of the patent and to the evidence of commercial success. It resisted hindsight reconstruction of the invention and did not rely simply on the individual elements of the claim being in the prior art but also on evidence of the level of skill in the art with respect to the making of the combination. No fault can be found in the legal propositions on which the court relied or in the court’s method of analysis, and Newell asserts none.

Newell first asserts that the trial court erred in reversing the jury’s verdict of nonobviousness because the trial court narrowly construed the “securement means” element of the claim, limiting it to “adhesive.” Newell does not argue that the claim excludes adhesive, but rather that other means are covered as well.¹³ This argument is meritless. A narrow construction of “securement means” was not prejudicial to Newell on the issue of obviousness. The more narrowly a claim is construed, the more likely the claim may be upheld in light of the prior art. J. Landis, Mechanics of Patent Claim Drafting 177 (2d ed.1974); 3 E. Lipscomb, Walker on Patents § 11:23 at 462 (3d ed. 1985).¹⁴

Newell asserts that to set aside the verdict Kenney had to meet an “almost impossibly lofty standard ... after the jury found that Kenney did not meet its burden of proof.” Contrary to Kenney’s argument, the trial court was not restricted, in applying the legal test for obviousness to the established facts, either by a quantum of proof or by a “lofty” standard. Quan-tums of proof relate to proof of facts, not legal conclusions. See SSIH Equip., S.A. v. United States Int’l Trade Comm’n, 718 F.2d 365, 375, 218 USPQ 678, 687 (Fed.Cir.1983) (“[W]e find it inappropriate to speak in terms of a particular standard of proof being necessary to reach a legal conclusion. Standard of proof relates to specific factual questions.”). Our precedent holds that the disputed facts underlying the legal conclusion must be established by clear and convincing evidence, not the ultimate legal conclusion of obviousness itself. See American Hoist, 725 F.2d at 1360, 220 USPQ at 770; Connell, 722 F.2d at 1549, 220 USPQ at 199.

Newell argues that the trial court was required to consider the evidence in the light most favorable to Newell and to draw the “inference” of obviousness in Newell’s favor. However, the requirement to draw favorable “inferences” relates only to factual inferences, not to legal conclusions based on an established set of facts, even though those facts do not all favor that conclusion. See Petersen Mfg. Co. v. Central Purchasing, Inc., 740 F.2d 1541, 1548, 222 USPQ 562, 567 (Fed.Cir.1984) (“Nor is the court’s conclusion on obviousness an adverse inference of fact.”); FMC Corp. v. Manitowoc Co., 835 F.2d 1411, 1416-17, 5 USPQ2d 1112, 1116-17 (Fed.Cir.1987); 10 J. Moore & H. Bendix, Moore's Federal Practice § 301.03[1] (2d ed.1988).

Newell states as a legal proposition: “The law presumes the existence of findings [by the jury] necessary to support the verdict.” In the context of this case that proposition overstates the presumption from the verdict. It is well settled that the jury is presumed to have resolved disputed factual issues in favor of the verdict winner. However, it may not be presumed that the jury found facts on which there is no evidence. Nor is the jury free to discard probative admissions and undisputed facts. See Baumstimler v. Rankin, 677 F.2d 1061, 1070, 215 USPQ 575, 582-83 (5th Cir.1982); Dual Mfg. & Eng’g, Inc. v. Burris Indus., Inc., 619 F.2d 660, 664, 205 , 1161 (7th Cir.) (en banc), cert. denied, 449 U.S. 870, 101 S.Ct. 208, 66 L.Ed.2d 90 (1980); Panther Pumps & Equip. Co. v. Hydrocraft, Inc., 468 F.2d 225, 228, 175 USPQ 577, 579 (7th Cir.1972), cert. denied, 411 U.S. 965, 93 S.Ct. 2143, 36 L.Ed.2d 685 (1973); 9 C. Wright & A. Miller, supra, at 591.

Newell argues that the Gossling references teach away from a do-it-yourself adjustable shade which does not require use of tools because that art requires “cutting the shade material.” Once Corcoran invented his plastic tearable material and publicly disclosed it, however, the problem of having to cut the material was eliminated. The inventor Ferguson himself candidly admitted:

“Q Do you agree, Mr. Ferguson, with the statement that nothing could be more obvious than to mount Corcoran shade material on a roller adapted to be reduced in length?

“A Yes, it was.”

Ferguson responded similarly to another question:

“Q [WJouldn’t it be obvious to a man skilled in the art as of February 1974, to put [the Corcoran material] on a roller which could likewise be reduced in length to correspond to the width of the window?

“A That could be put on a telesoping roller, yes.

“Q My question was wouldn’t it be obvious to a man skilled in the art that he could do that?

“A Yes, he could put it on a roller.”

Ferguson went even further and admitted the significance of the Corcoran material to the success of the invention in the following testimony:

“Q Do you agree, Mr. Ferguson, that you did not contribute the inventive thing which made the Newell shade a commercial success?

“A No, I did not.”

Like the inventor in Calmar, Inc. v. Cook Chemical Co., part of the Graham trilogy, once another supplied the key element, there was no long-felt need or, indeed, a problem to be solved by Ferguson. The following statement in Calmar would apply here with changes only in names and date:

The [Ferguson] invention ... rests upon exceedingly small and quite non-technical mechanical differences in a device which was old in the art. At the latest, those differences were rendered apparent in [1974] by the appearance of the [Corcor-an shade material], and unsuccessful attempts to reach a solution to the problems confronting [Ferguson] made before that time became wholly irrelevant.

383 U.S. at 36, 86 S.Ct. at 703. It must also be noted again that the Patent Office did not cite the Corcoran shade as prior art and that Newell did not disclose either the Corcoran shade material or the advertising for the Corcoran shade to the examiner.

Despite a very strong prima facie case of obviousness established by the evidence, Newell argues that the district court was obligated to draw the “inference” of nonobviousness from Newell’s evidence of commercial success, copying by others, and other secondary considerations. These arguments were unpersuasive to the trial court and are unpersuasive to us. First, as indicated, obviousness is not a factual inference; second, although these factors must be considered, they do not control the obviousness conclusion. See Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 960, 1 USPQ2d 1196, 1199 (Fed.Cir.1986); EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 908, 225 USPQ 20, 26 (Fed.Cir.), cert. denied, 474 U.S. 843, 106 S.Ct. 131, 88 L.Ed.2d 108 (1985).

Under similar circumstances, in EWP Corp., where the record showed that the invention had become “very successful” in the industry,¹⁵ this court held:

In reaching our conclusion that the invention claimed would have been obvious, we have considered the evidence and arguments pertaining to the so-called “secondary considerations” such as commercial success, licensing, adoption by the industry, etc. Upon full consideration of all the evidence, we remain convinced that it presents a clear and very strong case of obviousness based on admissions and the teachings of the new references above considered.

Id. at 907, 225 USPQ at 25. In this case, as well, although the record shows a highly successful product,¹⁶ the record also establishes such a strong case of obviousness based on admissions and the teachings of the prior art, including the improved Cor-coran tearable shade material, a reference not considered during examination, that the objective evidence of nonobviousness does not persuade us to reach a contrary conclusion.

We conclude from the established facts that the district court committed no legal error in holding that the invention of claim 1 of the ’770 patent would have been obvious within the meaning of 35 U.S.C. § 103.¹⁷ Thus, Newell was not improperly deprived of the jury’s verdict that the ’770 patent would not have been obvious.

V

Kenney’s Cross-Appeal on Attorney Fees

Kenney argues that the court erred in not finding this case “exceptional” within the meaning of 35 U.S.C. § 285 (1982) and that Kenney should have been awarded its reasonable attorney fees. The basis for Kenney’s argument is that Newell was guilty of inequitable conduct by failing to disclose Corcoran by name as the inventor of the vinyl fabric with invisible tear lines, Corcoran’s advertisements in the United States for his shades, and Corcoran’s correspondence with Ferguson, and in urging that a 1930 patent to Rice was the closest prior art. The district court held that Newell’s conduct did not rise to the level of inequitable conduct and that attorney fees were not warranted in the circumstances of this case. We are not persuaded of factual error or abuse of discretion by the district court in denying attorney fees. See Reactive Metals Alloys Corp. v. ESM, Inc., 769 F.2d 1578, 1582, 226 USPQ 821, 824 (Fed.Cir.1985). Thus, the district court’s denial of attorney fees to Kenney is affirmed.

Costs

The costs of each appeal shall be borne by the respective appellant.

AFFIRMED.

1 .The Federal Circuit follows regional circuit law on this type of procedural matter. Digital Equip. Corp. v. Emulex Corp., 805 F.2d 380, 382 n. 3, 231 USPQ 779, 781 n. 3 (Fed.Cir.1986). The procedure of ruling on the directed verdict motion after the jury verdict and entering judgment thereon, under the circumstances here, is in accordance with the procedural law of the First Circuit.

Rule 50(b) provides that a motion for JNOV must be made within ten days of entry of judgment. In First Safe Deposit National Bank v. Western Union Telegraph Co., 337 F.2d 743, 746 (1st Cir.1964), the court affirmed a district court entry of directed verdict when the court acted within the time for granting JNOV. Accord Norton v. Snapper Power Equip., 806 F.2d 1545, 1547 (11th Cir.1987); Nichols Constr. Co. v. Cessna Aircraft Co., 808 F.2d 340, 354-56 (5th Cir.1985); Warkentien v. Vondracek, 633 F.2d 1, 2 (6th Cir.1980).

The motion for directed verdict here was similarly granted within the time for JNOV. While the jury returned its verdict here on February 21, 1984, judgment was not entered at that time because other claims had to be resolved. Judgment was actually first entered on April 4, 1985, by directed verdict. Thus, this ruling falls within the ruling of First Safe Deposit National Bank.

2 . 35 U.S.C. § 103 provides in pertinent part:

A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

3 . Appeal Nos. 85-2232, 86-711, and 86-1018 are duplicate appeals by Newell, all from the district court’s April 4, 1985 judgment, filed because of uncertainty of the date from which to appeal. The Supreme Court in Budinich v. Becton Dickinson & Co., — U.S. -, 108 S.Ct. 1717, 1720-22, 100 L.Ed.2d 178 (1988), has now held that a decision on the merits is a final decision for purposes of immediate appeal, even though the recoverability or amount of attorney’s fees for the litigation remains to be determined. Appeal No. 86-742 is the Kenney cross-appeal.

4 . The question certified was whether the trial court may direct a verdict where evidence is undisputed.

5 . As the noted scholar, Professor Blume has stated:

The right guaranteed by the Constitution is the right to jury trial; not a right to a jury’s verdict. There is no right to a trial unless there is an issue to be tried.

In applying what may be called the "issue" test to determine whether there is a right to jury trial, each factual element in the claim or defense should be considered separately. There may be issues formed by the evidence as to some of the facts and not as to others. Only those facts which are in issue under the evidence should go to the jury for determination. The right of jury trial extends to these facts, and to these alone.

W. Blume, Origin and Development of the Directed Verdict, 48 Mich.L.Rev. 555, 574 (1950).

6 . It is necessary for a litigant seeking to have a judge rule on a legal issue to have followed the required procedures. A court is not obligated to act sua sponte. This qualification applies throughout this opinion.

7 . A notable conflict would arise between Con-nell and the most definitive decision of the court holding that the application of the statutory standard of obviousness to a set of established facts is an issue of law, Panduit Corp. v. Dennison Manufacturing Co., 810 F.2d 1561, 1 USPQ2d 1593 (Fed.Cir.), cert. denied, — U.S. —, 107 S.Ct. 2187, 95 L.Ed.2d 843 (1987). That decision was rendered following remand from the Supreme Court, 106 S.Ct. 1578 (1986), vacating 774 F.2d 1082 (Fed.Cir.1985). To the same effect are all the decisions of this court and its predecessors across the entire spectrum of our patent jurisdiction, which covers ex parte appeals from the Patent and Trademark Office, appeals from decisions of the United States International Trade Commission, and appeals from the United States Claims Court, as well as appeals from United States district courts. Representative cases may be found in the extensive listing at 2 D. Chisum, Patents § 5.04[3][d] at 5-157 to -158.1 (1988 and Supp.1988).

8 . Connell, American Hoist, and Structural Rubber all emphasize the need for juries to focus on the factual inquiries underlying obviousness. This can be achieved through interrogatories accompanying a general verdict, special fact verdicts, or mandatory alternative instructions. See Connell, 722 F.2d at 1546, 220 USPQ at 196-97, American Hoist, 725 F.2d at 1361, 220 USPQ at 771; Structural Rubber, 749 F.2d at 720, 223 USPQ at 1274.

9 . See 2 D. Chisum, supra, § 5.04[3][d] at 5-150 to -158.1 (reviewing each circuit’s position on whether obviousness is a question of law or fact).

10 . Rule 49(a) reads in pertinent part:

Special Verdicts and Interrogatories

(a) Special Verdicts. The court may require a jury to return only a special verdict in the form of a special written finding upon each issue of fact.

11 . Gossling '468 specifically teaches using the telescoping roller without the sleeve on the small roller section:

The embodiments of FIGURES 11-12 and 13-14 [showing direct attachment to smaller roller section] illustrate equivalent structures which will function in a manner similar to the paper tube and which can be substituted for the paper tube without sacrifice of the functional characteristics of the shade.

Specification ’468, col. 5, lines 28-32.

Similarly, a shade could be made with a sufficient excess of shade material which when wrapped upon itself would provide the supporting tube overlying the telescoping inner end of the shade roller.

Specification '468, column 6, lines 2-6.

12 . Newell argues that a 1967 internal memorandum of a Kenney employee proposing this combination was inadmissible evidence because it was not technically ‘‘prior art.” However, it was admissible for the purpose indicated. See Thomas & Betts Corp. v. Litton Sys., Inc., 720 F.2d 1572, 1580-81, 220 USPQ 1, 7 (Fed.Cir.1983).

13 . At first blush, the interpretation limiting "se-curement means” to "adhesive” appears erroneous. However, it must be understood, as New-ell admits, that staples, tacks, and the like do not meet the limitations of the securement means, e.g., "constant securing force” or the overall limitation that Newell admits the shade must be capable of assembly by customers without tools. Even intermittent glue is not within the claim, per the inventor.

14 . Further, the extra rolls of fabric which New-ell asserts are an equivalent of adhesive are also shown in the prior art Gossling ’468. See supra note 13.

15 . See EWP Corp., 755 F.2d at 908, 225 USPQ at 26 (Davis, J., concurring).

16 . Newell argues that the district court erroneously overlooked some of its evidence of sales. Assuming this is true, because the court acknowledged that the Newell shade was highly successful, we are unpersuaded that this error was harmful.

17 . Newell makes no separate argument on the patentability of dependent claims 2, 6, and 7. To the extent, if any, that Newell disputes any of the material facts relied on by the court, we conclude that no reasonable jury could resolve the underlying factual disputes on this record other than as stated by the trial judge. No error in overturning a material fact has been explicitly argued or shown.