[84] PAULINE NEWMAN, Circuit Judge, dissenting.

I respectfully dissent, for neither the law nor the record provides a basis for overturning the jury's verdict. Upon full trial, upon agreed and correct jury instructions, upon substantial evidence in the form of testimony and exhibits and demonstrations, a reasonable jury could have reached the verdict of infringement reached by this jury. That ends our review. With all respect to my colleagues on this panel, their rejection of the jury verdict and de novo determination of the factual issue of infringement is contrary to the law governing appellate review of jury verdicts.

The questions of infringement and equivalency were decided by the jury. See Gunning v. Cooley, 281 U.S. 90, 94, 50 S.Ct. 231, 233, 74 L.Ed. 720 (1930) ("Issues that depend on the . . . weight of evidence are to be decided by the jury."); Baltimore Ohio R. Co. v. Groeger, 266 U.S. 521, 524, 45 S.Ct. 169, 170, 69 L.Ed. 419 (1925) ("the weight and probative value of evidence are to be determined by the jury and not by the judge"). A reasonable jury, correctly instructed, viewing all the evidence presented at trial of the case here under review, could have found infringement by equivalency. Our role is appellate review, not trial de novo. See Gallick v. Baltimore Ohio R. Co., 372 U.S. 108, 112-14, 83 S.Ct. 659, 662-63, 9 L.Ed.2d 618 (1963) (the appellate court improperly invaded the jury's function and province in its holding that the evidence at trial of a causal connection fell short of that required for the consideration of a jury).

As the Court stated in Anderson v. City of Bessemer City, 470 U.S. 564, 574-75, 105 S.Ct. 1504, 1511-12, 84 L.Ed.2d 518 (1985), the trial on the merits is "the `main event' . . . rather than a `tryout on the road'", quoting Wainwright v. Sykes, 433 U.S. 72, 90, 97 S.Ct. 2497, 2508, 53 L.Ed.2d 594 (1977). When the relationship between trial and appellate tribunals is distorted, the consequences disserve the public and the courts:

The principal consequences of broadening appellate review are two. Such a course impairs the confidence of litigants and the public in the decisions of the trial courts, and it multiplies the number of appeals.

C. Wright, The Doubtful Omniscience of Appellate Courts, 41 Minn.L.Rev. 751, 779 (1957).

A [89] Appellate Review

The standard of judicial review of jury verdicts is established. Sometimes described as a "reasonable jury" standard and sometimes as a "substantial evidence" standard, the challenger must show that there was not an evidentiary basis for the verdict. As discussed by the Court:

But where, as here, there is an evidentiary basis for the jury's verdict, the jury is free to discard or disbelieve whatever facts are inconsistent with its conclusion. And the appellate court's function is exhausted when that evidentiary basis becomes apparent, it being immaterial that the court might draw a contrary inference or feel that another conclusion is more reasonable.

Lavender v. Kurn, 327 U.S. 645, 653, 66 S.Ct. 740, 744, 90 L.Ed. 916 (1946). This standard has its roots in the Constitution and in tradition, for the principles underlying the jury right require that the jury verdict receive judicial deference.

Many illustrations of the requisite standard of appellate review of jury verdicts appear in the precedent of the Third Circuit. E.g., Chuy v. Philadelphia Eagles Football Club, 595 F.2d 1265, 1273 (3d Cir. 1979) ( en banc) ("Our limited function at this point is to ascertain from review of the record whether there is sufficient evidence to sustain the verdict of the jury on this issue"); Dawson v. Chrysler Corp., 630 F.2d 950, 959 (3d Cir. 1980), cert. denied, 450 U.S. 959, 101 S.Ct. 1418, 67 L.Ed.2d 383 (1981) (the jury verdict must be sustained unless the record "is critically deficient of that minimum quantum of evidence from which a jury might reasonably afford relief"), quoting Denneny v. Siegel, 407 F.2d 433, 439 (3d Cir. 1969).

Federal Circuit decisions have well illustrated this standard. E.g., Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1571, 1 USPQ2d 1081, 1085 (Fed. Cir. 1986):

To convince this court that a trial judge erred in granting a motion for JNOV, an appellant need only show that there was substantial evidence to support the jury's findings and that those findings can support the jury's legal conclusion.

Also, e.g., DMI, Inc. v. Deere Co., 802 F.2d 421, 425, 231 USPQ 276, 278 (Fed. Cir. 1986) (to reverse the jury, the findings must not be supported by substantial evidence); Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 613, 619, 225 USPQ 634, 636 (Fed. Cir.), cert. dismissed, 474 U.S. 976, 106 S.Ct. 340, 88 L.Ed.2d 326 (1985) (determining from the evidence as a whole whether there was substantial evidence in support of the jury verdict); Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 893, 221 USPQ 669, 673 (Fed. Cir.), cert. denied, 469 U.S. 857, 105 S.Ct. 187, 83 L.Ed.2d 120 (1984) ("only when the court is convinced upon the record before the jury that reasonable persons could not have reached a verdict for the non-mover, should it grant the motion for JNOV.")

On judicial review following a duly made motion for judgment n.o.v., the evidence must be viewed and reasonable inferences drawn in the light most favorable to the party with the jury verdict. Continental Ore Co. v. Union Carbide Carbon Corp., 370 U.S. 690, 696, 82 S.Ct. 1404, 1409, 8 L.Ed.2d 777 (1962); Danny Kresky Enterprises Corp. v. Magid, 716 F.2d 206, 209 (3d Cir. 1983); Chuy, 595 F.2d at 1273. The reviewing court is not free to reweigh the evidence or substitute its own judgment for that of the jury, Blair v. Manhattan Life Ins. Co., 692 F.2d 296, 300 (3d Cir. 1982), or to pass on the credibility of witnesses. Kinnel v. Mid-Atlantic Mausoleums, Inc., 850 F.2d 958, 961 (3d Cir. 1988).

Those functions are assigned to the factfinder, in this case the jury. Our function is to determine only whether there is evidence upon which the jury could properly return a verdict, viewing the evidence most favorably to Kinnel the nonmovant, and giving Kinnel the benefit of all reasonable inferences.

Id. at 961-62.

The Federal Circuit is in accord. E.g., Orthokinetics, 806 F.2d at 1572-73, 1 USPQ2d at 1085-86 (it is "a misunderstanding of our appellate role" for this court to determine what is supported by the evidence as a whole, rather than whether the evidence the jury could have believed was substantial); Connell v. Sears, Roebuck Co., 722 F.2d 1542, 1546, 220 USPQ 193, 197 (Fed. Cir. 1983) (the appellate court must consider all the evidence in the light most favorable to the non-movant, must not determine the credibility of witnesses, and must not substitute its choice for that of the jury in finding facts, drawing inferences, or deciding between conflicting elements in the evidence). These are functions of the trier of fact, not the reviewing court.

These precepts are not here followed. The panel majority has rejected the jury verdict, although it is supported by substantial evidence and could clearly have been reached by a reasonable jury. Indeed, the panel majority has ignored much of the evidence that was presented at trial; see Part B post. The majority instead imposes the new requirements of "particularized testimony and linking argument" that were set forth in Lear Siegler, Inc. v. Sealy Mattress Co., 873 F.2d 1422, 10 USPQ2d 1767 (Fed. Cir. 1989). These requirements, which apply solely to jury trials, were not referred to at the trial, for Lear Siegler was decided eight months after this jury verdict was rendered.

These new requirements are not trivial. They demand a certain stylized testimony and specified attorney argument when trial is to a jury. As compared with trial to the bench, these requirements must be fulfilled no matter how simple the invention. The court holds that if this extra testimony and extra argument are omitted, the case can not go to the jury at all — no matter whether the evidence might suffice were the trial to the court. The panel majority, applying Lear Siegler to remove this case from the jury, has invoked a new requirement of proof of equivalency: proof of not only the three Graver Tank "prongs" of "function, way, and result", but also a fourth prong of "why".

It is contrary to due process to revise the evidentiary and procedural burdens of the trial after the jury's verdict has been rendered. Were these new criteria for jury trials indeed required to be applied to this case, then in the interest of justice a new trial, not reversal of the jury verdict, is the appropriate remedy. See Cone v. West Virginia Pulp Paper Co., 330 U.S. 212, 216 n. 4, 67 S.Ct. 752, 755 n. 4, 91 L.Ed. 849 (1947) (court always has discretion, when justice requires, to order a new trial); Roebuck v. Drexel University, 852 F.2d 715, 735-36 (3d Cir. 1988) (granting new trial when verdict contrary to the great weight of evidence); 9 C. Wright A. Miller, Federal Practice and Procedure, § 2539 at 608 (2d ed. 1971) (court may grant new trial when verdict is against the great weight of the evidence, even when there is insufficient basis for granting judgment n.o.v.)

In addition, as I shall discuss, even these new requirements were met in this thoroughly presented case. Even on the legal and evidentiary standards adopted by the panel majority, there is not sufficient basis for reversal of this jury verdict.

B [102] The Trial

The patented invention of Jacob H. Malta is a musical handbell that can be rapidly adjusted so that the bell tone is changed "on the fly" during performance of a musical composition. It is not a complicated device.

Because of the rapid adjustability of the bells that Malta invented, performers have achieved musical effects not previously available in the old, indeed ancient, art of handbell music. After this handbell was produced, composers of handbell music adopted a new system of notation for handbell scores. Music for handbells was now written that could not have been performed before. Patent validity was conceded at trial.

The patent drawing shows the Malta bell:

Claim 3, the only claim at issue, is directed to the entire bell, as discussed infra. The rotation of the clapper to change the striking surface, thereby changing the bell tone, was well known. The novel contribution of the Malta bell to the art was the mechanism for rapid adjustment of the clapper during performance; that aspect is not here challenged. The issue on this appeal is the jury verdict of equivalency, a verdict that required the jury to consider certain known, interchangeable clapper structures.

Infringement is a question of fact, Intervet America, Inc. v. Kee-Vet Laboratories, Inc., 887 F.2d 1050, 1053, 12 USPQ2d 1474, 1476 (Fed. Cir. 1989), as is the question of equivalence, Graver Tank Mfg. Co., Inc. v. Linde Air Products Co., 339 U.S. 605, 609, 70 S.Ct. 854, 856, 94 L.Ed. 1097, 85 USPQ 328, 331 (1950); Radio Steel Mfg. Co. v. MTD Products, Inc., 731 F.2d 840, 847, 221 USPQ 657, 662 (Fed. Cir.), cert. denied, 469 U.S. 831, 105 S.Ct. 119, 83 L.Ed.2d 62 (1984). At the trial extensive evidence was adduced on the issues both of literal infringement and infringement in accordance with the doctrine of equivalents. These questions are the province of the jury. Royer v. Schultz Belting Co., 135 U.S. 319, 325, 10 S.Ct. 833, 835, 34 L.Ed. 214 (1890); Carver v. Hyde, 41 U.S. (16 Pet.) 513, 520, 10 L.Ed. 1051 (1842); Sun Studs, Inc. v. ATA Equipment Leasing, Inc., 872 F.2d 978, 986, 10 USPQ2d 1338, 1345 (Fed. Cir. 1989); Perkin-Elmer, 732 F.2d at 900, 221 USPQ at 678. The jury found, inter alia, that claim 3 of the Malta patent was not literally infringed, but was infringed under the doctrine of equivalents. Infringement of claim 3 is the only issue on appeal.

Following is claim 3, clause by clause in accordance with the presentation at trial. Beneath each clause is a summary of the evidence of infringement as to each claim element. The evidence was methodically presented:

3. A handbell comprising in combination: a bell having a generally closed end;

1. photograph of disassembled parts of bell with transparent overlay of claim text for this element

2. color drawing highlighting this element in accused bell

3. explained by witness

4. no contradictory evidence

5. actual bells were shown and handed to jury

6. this element was known in prior art bells

a clapper assembly adapted to be removably carried within said bell and centrally of the closed end thereof,

1. photograph of disassembled parts of bell with transparent overlay of claim text for this element

2. a second color drawing highlighting this element in accused bell

3. explained by witness

4. no contradictory evidence

5. this element was known in prior art bells

said assembly comprising a clapper shaft having one end pivotally associated centrally of the closed end of said bell and carrying a clapper member at its free extremity,

1. photograph of disassembled parts of bell with transparent overlay of claim text for this element

2. a third color drawing highlighting this element in accused bell

3. explained by witness

4. no contradictory evidence

5. this element was known in prior art bells

said clapper member comprising a generally circular striker assembly rotatably positioned substantially normal to said clapper shaft

1. photograph of disassembled parts of bell with transparent overlay of claim text for this element

2. a fourth color drawing highlighting this element in accused bell

3. explained by witness

4. no contradictory evidence

5. this element was known in prior art bells

and including a plurality of striking buttons positioned in opposed pairs around the outer periphery thereof and wherein each pair of buttons has a different degree of hardness;

1. photograph of disassembled parts of bell with transparent overlay of claim text for this element

2. a fifth color drawing highlighting this element in accused bell

3. explained by witness

4. no dispute as to presence of opposed pairs of striking elements positioned around the outer periphery of the clapper, each pair having a different degree of hardness

[the only dispute at trial was the equivalency of the striking buttons of the claim clause and the felt/plastic striking surfaces of the accused bells]

5. equivalency of the striking surfaces was explained and demonstrated using accused bell

6. both forms of striking surfaces were illustrated as alternatives in the patent in suit

7. both forms of striking surfaces were known in the prior art

means on said clapper assembly coacting with said rotatable striker assembly for permitting rotation of said striker assembly relative to said clapper shaft for selectively positioning desired pairs of buttons in striking relation to said bell;

1. photograph of disassembled parts of bell with transparent overlay of claim text for this element

2. a sixth color drawing highlighting this element in accused bell

3. explained and demonstrated by witness

4. demonstrated in videotaped performance

5. no contradictory evidence

[this was the first new element of the claimed bell; its presence in the accused bells was admitted]

and detent means cooperating with said rotatable striker for releasably holding said striker assembly in any preselected position.

1. photograph of disassembled parts of bell with transparent overlay of claim text for this element

2. a seventh color drawing highlighting this element in accused bell

3. explained and demonstrated by witness

4. demonstrated in videotaped performance

5. no contradictory evidence

[this was the other new element; its presence in the accused bells was admitted]

Mr. Malta was a principal witness on the question of infringement. He identified each of the elements of the claims, and the corresponding element of the accused bells. The jury was shown 24" X 30" photographs of the details of disassembled bells, and Mr. Malta used transparent overlays identifying each part of the accused bells and the corresponding element in each claim.

He also testified with the aid of seven 24" X 30" drawings for each claim, each drawing highlighting in color a different part of the accused bells, and labelled to show the corresponding element of the claims. From these photographs and drawings, Mr. Malta compared each claim element with the corresponding element in the accused bells. The jury viewed a videotaped musical performance during which Malta stopped the tape to show the patented bells being quickly adjusted by the performers.

It was explained to the jury that what was new in Malta's bells was his means for rapidly changing the striking surfaces during a musical performance. Mr. Malta demonstrated how the clapper is rotated during performance and click-locked into the desired striking position: the new elements of the claimed combination. It was not disputed by Schulmerich that these new elements, as well as all the other elements of claim 3 except the form of the striking surfaces, were literally present in the accused bells.

Malta demonstrated to the jury how the different striking surfaces produced different tones. He explained to the jury that it was not new to use striking surfaces of different hardness on the bell clapper, in order to change the bell tone. The jury was shown bell clappers two hundred years old having this feature. Malta also explained that it was not new to use clappers having the striking surfaces illustrated in the patent; that these striking surfaces were known. The issue before the jury was simply the equivalence of the two sets of known striking surfaces that were described in the patent. There was substantial evidence of the equivalence of these striking surfaces. I shall discuss some of this evidence, for the panel majority does not.

For example, the patent specification shows the felt and plastic striking surfaces that are used in the accused bells, and also shows the button striking surfaces of claim 3. The patent specification discusses their relationship, and explains that the varying hardness of these surfaces varies the tone of the bell. These embodiments are illustrated in Figures 3 and 7 of the patent:

Schulmerich did not dispute that the accused bells use the embodiment of Figure 3. In evidence was the patent specification, which describes the Figure 3 striking surfaces as follows:

The striking surface of the ring 64 [of the clapper] may offer different hardness strike surfaces 68 therearound for varying the tone. This is accomplished by drilling or molding relief portions 69 adjacent the surfaces. A third opposed pair of striking surfaces may also be provided wherein felt or some other relatively soft material is applied to opposed striking surfaces of the clapper 26. In this embodiment, the clapper will offer three opposed areas of strike, each with a different impact effect and available according to its position relative to the plane of swing of the clapper 26.

The specification also discusses the striking buttons of Figure 7, and relates them to the Figure 3 embodiment and to the invention as a whole:

Opposed pairs of buttons 82 are of the same hardness and each opposed pair is of a different hardness to accomplish the same results as described in connection with the clapper shown in FIG. 3. It is apparent that other deviations may also be used without departing from the spirit of my invention which comprehends a manually adjustable clapper having a plurality of strike portions, in opposed relation and of different hardness, to selectively produce a variety of tonal effects.

I emphasize that the striking surfaces used in the Schulmerich bells, the only claim element for which equivalence was at issue, were described, as well as pictured, in the patent. The patent specification describes how the hardness of the "strike portions" is varied, and how these alternative embodiments function to change the tone of the bell.

Malta explained all this at trial, with explicit reference to the claimed invention and the accused bells. He testified that the felt striking surfaces in the Schulmerich handbells (shown in Fig. 3 of the patent) function in the same way and with the same effect as the softest pair of buttons (Fig. 7) to produce a soft tone. He testified that the plastic striking surfaces (Fig. 3) and the plastic surfaces with slots (Fig. 3) of the Schulmerich handbells function in the same way and with the same effect as the harder and medium pairs of buttons (Fig. 7), to produce the brilliant and medium tones.

Malta also explained this correspondence between the striking surfaces of the claimed and the accused bells using a color-highlighted drawing labelled with the relevant claim clause. For example:

Q: Would you make that clear as to what the structure is in the Schulmerich bell that corresponds to the buttons that are recited in the claim?

A: All right. The structure is these portions of the clapper, in this case the opposed felt pieces, and adjacent thereto on each side these elliptical spots of green, indicating that there are additional pairs of opposed striking surfaces.

Q: Striking surfaces. Would you go on with your explanation of how the portion illustrated in color in the exhibit corresponds to the claim language?

A: Right. The — as I described, we have a plurality of buttons, there's three sets, buttons or the equivalent thereof, and they are in opposed pairs around the periphery. We've described how they are related to these indexing slots in the underside of the brass clapper insert, and each pair has a different degree of hardness, we've described that. Here again we have felt which produced a soft impact sound. Here, this would be in relation to this slotted portion here where we have a slot in the core and at 180 degrees another slot, that would be the medium impact position. And then the lowermost one would be the — this one opposed to this where we have a solid plastic material in the impact plane producing a brilliant sound.

Malta here, and elsewhere, did compare each pair of striking surfaces, and did explain to the jury the way the various striking surfaces changed the tone of the bell. As further evidence of the equivalence of the striking surfaces, it was explained to the jury that the prior art '574 patent describes the same felt, plastic, and slotted plastic surfaces as were shown to be present in the accused bells, as were shown to be pictured in Figure 3 of the patent in suit, and as were discussed by Malta in his testimony. A 1902 catalogue of prior art bells, about which Malta also testified, shows "pins" of different materials on a rotatable clapper. Mr. Malta explained and demonstrated to the jury that the use of striking surfaces made from material of varying degrees of hardness was known in the prior art; and that the use both of striking buttons and striking surfaces made of felt, plastic, and plastic with slots, to produce varying degrees of hardness, was known in the prior art. This comports with the holding in Graver Tank, 339 U.S. at 609, 70 S.Ct. at 856, 85 USPQ at 331, that proof of equivalence "can be made . . . by the disclosures of the prior art".

The panel majority, holding that there was insufficient evidence of equivalency to present the issue to a jury, appears to concentrate its attack on Malta's evidence of the "way" aspect of the function/way/result test of Graver Tank. The panel majority finds an inadequate showing of why the elements work in the same way.

Following is another example of the testimony in which Malta explained and demonstrated the "way" the bells work, by rotating the clapper and aligning the surfaces of varying degrees of hardness in the striking plane. The witness also explained "why", describing the felt surfaces, the slotted plastic, and the solid surfaces:

Q: [E]xplain to the jury what you mean about changing the brightness or color. Demonstrate it. . . .

A: May I demonstrate it?

Q: . . . you will . . . certainly, certainly.

A: All right. Right now this clapper is aligned so that there are felt surfaces in the striking plane. The clapper is restricted in its motion so that it will only move through one plane, and it's going to be moving toward you. I'll ring it now. (Rings a bell.) There we've got a rather soft, mellow sound.

I turn it to the next indexing spot and this spot are the opposed surfaces contain cord in, molded in slots. These slots will allow the plastic surface to give, to compress. And in so doing the tone that results will be brighter because we do not have felt covering the surface, felt being softer, but it will not be as bright as it will in the next position which we'll use opposed surfaces where there are no cord slots. (Rings a bell.)

And now I'll dampen the bell and I've turned it already to the third position which utilizes solid surfaces and strike it. (Rings a bell.) And again we've got a brighter sound. I'll run through it now quickly. (Rings a bell.)

The jury was not "left to its own imagination", as my colleagues hold, on the "function, way, and result" determination of equivalency. Although the panel majority states that Malta presented only "offhand" and "conclusory" evidence, that statement does not accord with the record.

Malta's testimony on infringement took most of three days. Each claim clause was compared with its embodiment in the accused handbells, using real, demonstrative, and testimonial evidence, for literal infringement and for equivalency. There was substantial evidence of the function, way, and result of the striking surfaces of the accused handbells compared with the striking surfaces of the claimed invention. There was substantial evidence not only as to this specific claim element but also as to the invention as a whole, leaving no theory of equivalency uncovered. Compare Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 4 USPQ2d 1737 (Fed. Cir. 1987) ( en banc), cert. denied, 485 U.S. 961, 108 S.Ct. 1226, 99 L.Ed.2d 426 (1988) (requiring presence of every claim element, literally or by an equivalent) with Graver Tank, 339 U.S. at 607-08, 70 S.Ct. at 855-56, 85 USPQ at 330 (equivalency is determined of the invention as a whole).

Looking first at the invention as a whole, there was substantial evidence that the accused bell functioned by instantaneous hand adjustment of the clapper, as does the claimed bell; changing the striking surfaces of varying hardness, thereby changing the tone of the bell. As to way, there was substantial evidence of how the tone is changed on rotation of the clapper, due to the change in hardness of the surface in the striking plane, for the claimed and the accused bells. As to result, there was substantial evidence of the rapidly adjustable changes in tone of the accused bell, as in the claimed bell, to obtain soft, medium, and hard tones.

The jury was instructed that in order to find infringement every element of the claim or the equivalent of every element must be present in the accused device. Looking at the specific claim element for which equivalency was at issue, i.e., the "plurality of striking buttons in opposed pairs having different degrees of hardness", again there was testimonial, documentary, and real evidence of the function, way, and result that characterize this element in the accused bells, and equivalency to the function, way, and result that characterize the corresponding element of the claim. Malta presented substantial evidence that the function of the opposed pairs of felt/plastic striking surfaces in the Schulmerich bells, and of the opposed pairs of striking buttons of the claim, is to produce varying tones on striking the bell. Using physical and documentary evidence, Malta testified that the felt, solid plastic, and slotted plastic surfaces of the accused bells "function like buttons".

Malta also presented substantial evidence that the way the striking surfaces produce varying tones is by their varying degrees of hardness, in the accused bells and in the claimed invention. He pointed to the accused striking surfaces, using a color-highlighted drawing, and testified that "these are the three positions that I described earlier on the clapper that produce the hard, medium and soft", and that "each pair has a different degree of hardness." I quoted ante Malta's discussion of how slots in the plastic surface affect the tone:

These slots will allow the plastic surface to give, to compress. And in so doing the tone that results will be brighter because we do not have felt covering the surface, felt being softer, but it will not be as bright as it will in the next position which we'll use opposed surfaces where there are no cord slots.

The Malta patent, in evidence and the subject of testimony before the jury, also describes the way both sets of striking surfaces function; see Figures 3 and 7 pictured ante and the description in the patent specification.

Although the panel majority now holds that Malta was required to explain how and why these known surfaces work in the way that they were known and shown to work, at least when trial is to a jury, Schulmerich did not raise this point; not on motion for directed verdict, not in its requested jury instructions, not on motion for judgment n.o.v., and not in its appellate brief. As a criterion of equivalency, it is unprecedented.

However, as I have stated, Mr. Malta did explain how and why. He explained that felt is "softer" than plastic, and he explained that the slots "allow the plastic to give, to compress", producing a less brilliant sound than the solid plastic surfaces. He was not required to explain "why". An inventor need not know the why of the scientific and technologic principles underlying an invention. Diamond Rubber Co. v. Consolidated Rubber Tire Co., 220 U.S. 428, 435-36, 31 S.Ct. 444, 447, 55 L.Ed. 527 (1911); Fromson v. Advance Offset Plate, Inc., 720 F.2d 1565, 1570, 219 USPQ 1137, 1140 (Fed. Cir. 1983). For example, in Graver Tank it was not required that the patentee explain why manganese and magnesium have similar properties in the claimed composition — an explanation requiring an understanding of atomic structure and chemical forces. Rather, it was the observed fact of the similar properties when used in the claimed composition that was legally significant.

Malta also provided substantial evidence that the resulting change of tones is the same, for the striking surfaces of the accused bells and those of claim 3. He testified to the "different impact sounds" and "different tonal effect" that result. All of this evidence was specific to the issue of equivalency of the striking buttons and the felt/plastic/slotted plastic surfaces.

The evidence was thorough and, if anything, redundant. It is hard to imagine what more would have been appropriate. Malta surely met that threshold quantity and quality of evidence required for consideration by the jury of the factual question of equivalency. A reasonable jury viewing this evidence could have found that these known alternative embodiments were equivalent.

The fundamental right of litigants to a jury trial is impugned by the creation of new evidentiary rules after the trial is over. "[T]he procedures by which the facts of the case are determined assume an importance fully as great as the validity of the substantive rule of law to be applied." Speiser v. Randall, 357 U.S. 513, 520, 78 S.Ct. 1332, 1339, 2 L.Ed.2d 1460 (1958) (misplacement of burdens of proof and persuasion violated procedural safeguards). By holding that Malta was required to present evidence of "why" because the factfinder was a jury, the majority creates a new substantive and procedural rule of uncertain soundness, as well as treading upon due process.

C [136] The Jury Instructions

The parties agreed on the law to be applied. There was no objection to the jury instructions. Agreed instructions are subject to the general rule that failure to object will bar a later challenge to the law that was applied. Fed.R.Civ.P. 51:

No party may assign as error the giving or the failure to give an instruction unless that party objects thereto before the jury retires to consider its verdict, stating distinctly the matter objected to and the grounds of the objection.

See also, e.g., United States v. 78.40 Acres of Land, 384 F.2d 746 (3d Cir. 1967) (counsel had no suggestions or objections to the jury charge, thus waiving assignment of error); Allen Organ Co. v. Kimball Int'l, Inc., 839 F.2d 1556, 1566, 5 USPQ2d 1769, 1777 (Fed. Cir.), cert. denied, 488 U.S. 850, 109 S.Ct. 132, 102 L.Ed.2d 104 (1988) (agreement without objection to the jury charge is agreement to the law the jury is to apply). This is not the rare case where appellate intervention on the basis of plain error in an instruction is "necessary to prevent a miscarriage of justice". 9 C. Wright A. Miller, Federal Practice and Procedure, § 2558 at 672 (2d ed. 1971).

Schulmerich did not request jury instructions on any of the points on which the panel's majority opinions now rely. In instructing the jury on infringement in terms of the doctrine of equivalents, the trial court used the classical words of Graver Tank, 339 U.S. at 609, 70 S.Ct. at 856, 85 USPQ at 331; and also explained the law of equivalency in light of other factual aspects of equivalency that had been raised at the trial:

Infringement under the Doctrine of Equivalents may exist if the accused handbells perform substantially the same function in substantially the same way so as to obtain substantially the same results as the claimed invention. I'll repeat that.

Infringement under the Doctrine of Equivalents may exist if the accused handbells perform substantially the same function in substantially the same way so as to obtain substantially the same results as the claimed invention.

What constitutes equivalency must be determined considering the context of the patent, what we're talking about, the prior art and the particular circumstances of the case. The smaller the advance over the prior art, that is, what's in the prior field, the narrower the range of available equivalents.

Also, it must be kept in mind that the Doctrine of Equivalents has certain limits. For example, the doctrine may not be used to support an interpretation that would resurrect or reopen subject matter surrendered or dropped during prosecution of the patent application or subject matter that is in the realm of public information.

Additionally, the scope of the patent may not be expanded or extended so far that they've become invalid or meaningless in light of the scope of the prior art.

Also, equivalents must be established with respect to the claims of the patent, not for commercial purposes for which the products are used.

In applying the Doctrine of Equivalents, remember that infringement requires that each and every element of an asserted claim or the equivalent of the element must be present in the accused device.

Schulmerich's counsel said: "I think it was a nice charge."

Neither member of the panel majority directs criticism to the jury instructions.

It must be assumed that the jury followed the court's instructions. Aspen Skiing Co. v. Aspen Highlands Skiing Corp., 472 U.S. 585, 604, 105 S.Ct. 2847, 2858, 86 L.Ed.2d 467 (1985). A reasonable jury, applying these instructions in light of the evidence, could have found infringement of claim 3 under the doctrine of equivalents. The record shows that there was substantial evidence on which the jury could rely to find equivalency. See Kinnel, 850 F.2d at 961-62 (verdict must be affirmed if there is the minimum amount of evidence on which the jury could rely, giving the nonmovant the benefit of all reasonable inferences).

I can not discern, and the panel majority does not explain, how the jury was "put to sea without guiding charts". In addition to the well-organized testimony, there were the actual bells, the photographs, the charts, the videotape, the description and drawings in the patent, and the prior art. There were examination and cross-examination, opposing witnesses, and experts. All of the exhibits were taken to the jury room. These bells are simple devices. The majority's criticism that this jury was "left to its own imagination" on the technical and legal issue of equivalency is belied by the record. Any legal gap was waived by failure to object to the jury instructions, McAdam v. Dean Witter Reynolds, Inc., 896 F.2d 750, 768-69 (3d Cir. 1990); and any technical gap must be measured by the established standard for review of jury verdicts. Denneny, 407 F.2d at 439 (the jury verdict must be sustained unless the record "is critically deficient of that minimum quantum of evidence from which a jury might reasonably afford relief"). On the correct standard, the jury verdict must be upheld.

D [144] The New Rules for Jury Trials

Eight months after this jury verdict was rendered this court held, in Lear Siegler, Inc. v. Sealy Mattress Co., 873 F.2d 1422, 10 USPQ2d 1767 (Fed. Cir. 1989), that proof of equivalency requires a different evidentiary standard and enlarged attorney explanation when a jury is the trier of fact, as compared with trial to the court. Both members of the panel majority rely on this holding, or at least on the dictum to similar effect in Nestier, see n. 2, supra.

As I have discussed, the Lear Siegler requirements of "particularized testimony and linking argument" in jury trials are in conflict with Graver Tank, 339 U.S. at 609, 70 S.Ct. at 856, 85 USPQ at 331, wherein the Court made clear that proof of equivalence "can be made in any form". If, as both members of the panel majority insist, the Lear Siegler requirements are not new, their unprotested absence from the jury instructions, and from every other aspect of the trial, means that they were waived. And this panel's new requirement that there be evidence of "why" as well as "function, way, and result" contravenes the holding of Graver Tank that "equivalence, in the patent law, is not the prisoner of a formula". 339 U.S. at 609, 70 S.Ct. at 856, 85 USPQ at 330.

The new requirements also conflict with the truism that attorney argument is not evidence, 1 Wigmore On Evidence, § 1(b), at p. 7 (Tillers rev. 1983), and with the further truism that "the required findings are controlled by the court's instructions to the jury", DMI, 802 F.2d at 425, 231 USPQ at 279. There is also conflict with the rule that the appellate court must view the evidence and draw reasonable inferences in the light most favorable to the party with the verdict, Link v. Mercedes-Benz of North America, Inc., 788 F.2d 918, 921 (3d Cir. 1986); and conflict with the proscription against appellate fact-finding:

[C]onflicting evidence which could reasonably lead to inconsistent conclusions will not justify a judgment notwithstanding the verdict or a directed verdict. It is the function of the trier of fact alone, the jury in this instance, to evaluate contradictory evidence and to draw inferences therefrom.

Fireman's Fund Ins. Co. v. Videfreeze Corp., 540 F.2d 1171, 1178 (3d Cir. 1976), cert. denied, 429 U.S. 1053, 97 S.Ct. 767, 50 L.Ed.2d 770 (1977) (citations omitted).

An additional conflict with precedent arises in the panel majority's treatment of expert testimony. Although Malta testified as an expert, the majority rejects that testimony as insufficient under its new approach to jury trials. Compare, e.g., Symbol Technologies, Inc. v. Opticon, Inc., 935 F.2d 1569, 1574-76, 19 USPQ2d 1241, 1245-46 (Fed. Cir. 1991), wherein this court held that under the Federal Rules of Evidence an expert's testimony on infringement, including claim charts, was sufficient to establish a prima facie case of infringement. See Sartor v. Arkansas Natural Gas Corp., 321 U.S. 620, 627-28, 64 S.Ct. 724, 728-29, 88 L.Ed. 967 (1944) (where trial court admits opinion testimony, it is for jury to decide what, if any, weight to assign it). Here, Malta's testimony is being held insufficient as a matter of law, for failure to meet the majority's retrospectively imposed requirements for jury trials.

Today's paternalistic ruling that more and different evidence and argument are required when infringement is tried to a jury diverts patent jury trials from the mainstream of the law, a place assured by history and once accepted by the Federal Circuit:

So long as the Seventh Amendment stands, the right to a jury trial should not be rationed, nor should particular issues in particular types of cases be treated differently from similar issues in other types of cases.

Connell v. Sears, Roebuck, 722 F.2d at 1547, 220 USPQ at 197.

[I]t is appropriate to affirm unequivocally that patent litigants are entitled to neither a greater nor a lesser but to the same right to a jury trial, under the same governing considerations, as are all other litigants.

SRI International v. Matsushita Electric Corp. of America, 775 F.2d 1107, 1127, 227 USPQ 577, 590 (Fed. Cir. 1985) (Markey, C.J., additional views). In Railroad Dynamics, Inc. v. A. Stucki Co., 727 F.2d 1506, 1515, 220 USPQ 929, 937 (Fed. Cir.), cert. denied, 469 U.S. 871, 105 S.Ct. 220, 83 L.Ed.2d 150 (1984), this court stated:

There is, of course, no reason for considering patent cases as somehow out of the mainstream of the law and rules of procedure applicable to jury trials for centuries under our jurisprudence.

The retroactive imposition of these new rules and resultant reversal of the jury verdict also contravenes the guidance of Chevron Oil Co. v. Huson, 404 U.S. 97, 92 S.Ct. 349, 30 L.Ed.2d 296 (1971) (discussing retroactive imposition of law).

This court is changing not only the rules governing jury trials, but the rules of appellate review. The mischief is well illustrated in today's post hoc, retrospectively imposed, micro-management of the jury trial process. It is inimical to due process, for litigants and trial judges will not know when the Federal Circuit will decide, on appeal, that a particular issue required more explanatory testimony and attorney argument at a jury trial than either the parties or the trial judge deemed necessary, or the law required.

The role of the jury in civil litigation is not ours to change. See H.T. Markey, On Simplifying Patent Trials, 116 F.R.D. 369, 370 (1987):

There is neither reason nor authority for employing in a patent trial procedures and practices different from those employed in any other civil trial. Indeed, reason and authority mandate the contrary.

On appellate review, after the motion for judgment n.o.v. has been made and decided, the appellate court shall "apply the same standard as the trial court." Simone v. Golden Nugget Hotel and Casino, 844 F.2d 1031, 1034 (3d Cir. 1988).

The standards for granting a motion for judgment n.o.v., on which the constitutionality of such action depends, are the same as those governing the direction of a verdict. Thus, the motion for judgment n.o.v. may be granted only when, without weighing the credibility of the evidence, there can be but one reasonable conclusion as to the proper judgment. Where there is sufficient conflicting evidence, or insufficient evidence to conclusively establish the movant's case, judgment n.o.v. should not be awarded. In considering the motion, the court must view the evidence in the light and with all reasonable inferences most favorable to the party who secured the jury's verdict. This approach governs the appellate courts as well as the trial courts.

5A Moore's Federal Practice ¶ 50.07[2] (2d ed. 1985) (footnotes omitted).

It is incorrect to hold that the motion for judgment n.o.v. converts appellate review of a jury verdict to simple review of the trial judge's decision, as if there were no jury and no verdict. See Boyle v. United Technologies Corp., 487 U.S. 500, 513-14, 108 S.Ct. 2510, 2518-19, 101 L.Ed.2d 442 (1988) (it was error for the appellate court to decide on its own whether the evidence was sufficient; the necessary inquiry was whether a reasonable jury could, on the proper formulation of the defense, have found for the plaintiff on the facts presented); Continental Ore Co. v. Union Carbide Carbon Corp., 370 U.S. 690, 695-96, 82 S.Ct. 1404, 1408-09, 8 L.Ed.2d 777 (1962) (criticizing appellate court for reviewing "the correctness of the judgment" entered on the jury verdict, instead of following the rules for review of jury verdicts). "[J]udges . . . are precluded from reexamining facts tried by a jury". Davis v. Omitowoju, 883 F.2d 1155, 1165 (3d Cir. 1989).

Similarly on motion for directed verdict, a motion whereby the trial judge must decide whether to withhold the case from the jury:

The Court of Appeals was, of course, bound to view the evidence in the light most favorable to [the non-movant] and to give it the benefit of all inferences which the evidence fairly supports, even though contrary inferences might reasonably be drawn.

Continental Ore Co., 370 U.S. at 696, 82 S.Ct. at 1409 (1962). The Court quoted Professor Moore's statement that

"the appellate court must consider the evidence in its strongest light in favor of the party against whom the motion for directed verdict was made, and must give him the advantage of every fair and reasonable intendment that the evidence can justify."

Id. at 696 n. 6, 82 S.Ct. at 1409 n. 6, quoting 5 Moore's Federal Practice § 2316 (2d ed., 1951).

Nor can the right to jury trial of this factual issue be extinguished because the doctrine of equivalents was "judicially devised to do equity". The jury has historically been charged with the factual inquiry of equivalency:

The question whether one thing is a mechanical equivalent for another is a question of fact for the jury, on the testimony of experts, or an inspection of the machines; and it is an inference to be drawn from all the circumstances of the case, by attending to the consideration, whether the contrivance used by the defendant is used for the same purpose, performs the same duties, or is applicable to the same object, as the contrivance used by the patentee.

G. Curtis, A Treatise on the Law of Patents, ch. VIII, § 310 at p. 405 (4th ed. 1873). This court, by retroactively imposing new requirements for proving infringement, then re-finding the facts under the guise of determining whether these new requirements were complied with, has denied this litigant's historic right. I do not lightly charge my colleagues with so serious a breach; yet the Supreme Court has admonished:

Maintenance of the jury as a fact-finding body is of such importance and occupies so firm a place in our history and jurisprudence that any seeming curtailment of the right to a jury trial should be scrutinized with the utmost care.

Dimick v. Schiedt, 293 U.S. 474, 486, 55 S.Ct. 296, 301, 79 L.Ed. 603 (1935).

Applying the correct standard of appellate review, the jury's verdict must be affirmed. The panel majority has adopted an improper view of the jury process, in contravention of fundamental law and the precedent of the Supreme Court, the Third Circuit, and the Federal Circuit. Thus, respectfully, I dissent.