CAFC Emphasizes Evidentiary Standard for Invalidity

In Koito Manufac. v. Turn-Key-Tech, slip op. 03-1565, -1603, August 23, 2004, the district court focused exclusively on the JP '082 reference, concluding that "the evidence regarding this reference alone is sufficient to support the jury’s anticipation verdict." At trial, Koito entered the JP '082 reference into evidence, but otherwise failed to provide any testimony or other evidence that would demonstrate to the jury how that reference met the limitations of the claims in the '268 patent or how the reference enabled one of ordinary skill in the art to practice the claimed invention.

In fact, Koito did not even mention the JP '082 reference after introducing it into evidence. Koito's expert merely offered a conclusion of invalidity relating to a quintet of prior art patents which included JP '082, stating that

All these prior art patents provide for products and ways of making products with thick and thin sections. The gate locations are shown, and they all have inherently crossing flows in sections of the product, sometimes substantial sections of these products, such that they all would have a cross-laminated section as Turn Key is applying that term to the accused lenses.

The Federal Circuit concluded that the district court erred in finding Koito’s evidence to be sufficient to meet Koito's burden of showing anticipation by "clear and convincing evidence."

We have consistently explained what is necessary to show anticipation by a given reference:

Typically, testimony concerning anticipation must be testimony from one skilled in the art and must identify each claim element, state the witnesses' interpretation of the claim element, and explain in detail how each claim element is disclosed in the prior art reference. The testimony is insufficient if it is merely conclusory.

General and conclusory testimony, such as that provided by Dr. Kazmer in this case, does not suffice as substantial evidence of invalidity. This is so even when the reference has been submitted into evidence before the jury. Because Koito failed to articulate how the reference anticipates or makes obvious the '268 patent, it has not presented sufficient evidence for the jury with respect to the reference.

We cannot, however, so easily dismiss Koito's other evidence of anticipation and obviousness. At trial, Dr. Kazmer analyzed a TDK two-color cassette and discussed in detail the prior art Japanese patent 1-113886. In addition, Turn-Key’s expert Dr. Paul Brown admitted at trial that certain limitations of the '268 patent were present in the prior art. On remand, the district court should review the trial testimony and evidence, especially that regarding the plastic cassette technology, to determine whether Koito provided clear and convincing evidence to the jury on the issue of anticipation and obviousness to render the '268 patent invalid.