In Comparer Corp. v. Antec, Inc., the Court of Appeals for the Federal Circuit (“CAFC”) upheld the District Court’s claim construction but vacated the jury’s verdicts on obviousness as irreconcilably inconsistent, remanding the case for a new trial on invalidity. Comaper had brought suit against Antec alleging willful infringement of multiple claims of U.S. Patent No. 5,955,955, a cooling device designed to mount within the drive bay of a computer. The jury found willful infringement of claims 1, 2, 7, 12, and 13, and that independent claims 1 and 12 were not invalid as obvious. However, the jury also found that dependent claims 2, 7, and 13 were obvious. Because the District Court did not grant a new trial based on the irreconcilably inconsistent verdicts the CAFC vacated the verdict and remanded.

Comaper brought suit against Antec, alleging that several of its products, including the HD Cooler, the Hard Disk Drive Cooler, and the Hard Disk Cooling System infringed Comaper’s patent. Following a five-day trial, the jury returned a Special Verdict finding that Antec had infringed claims 1, 2, 7, 12, and 13, and that the infringement was willful. The jury also found that independent claims 1 and 12 were not obvious. However the jury also found that claims 2 and 7, which are dependent on claim 1, and claim 13, which is dependent on claim 12, were invalid as obvious. In post-trial motions, Antec argued that it was entitled to judgment in its favor, or alternatively a new trial, because of the inconsistent nature of the verdict. The District Court agreed that the verdicts were inconsistent, but denied Antec’s motions, finding that Antec had waived the right to make a post-trial motion by not making a motion for judgment as a matter of law (“JMOL”) at the close of evidence, and that Antec had failed to present sufficient evidence for the jury to find dependent claims 2, 7, and 13 obvious.

The CAFC agreed that Antec had failed to move for JMOL, and had in fact argued in opposition to Comaper’s Rule 50(a) motion that the evidence established the basis for going to the jury. The CAFC held that this failure to move for JMOL at the close of evidence constituted a wavier of Antec’s right to JMOL following the jury’s verdict.

However, the CAFC held that Antec was entitled to a new trial on the question of invalidity because of the inconsistent jury verdicts on obviousness. Antec, Comaper, and the District Court all recognized the inconsistency, and the CAFC cited Callaway Golf Co. v. Acushnet Co., 576 F.3d 1331, 1344 (Fed. Cir. 2009) for the proposition that “a broader independent claim cannot be nonobvious where a dependent claim stemming from that independent claim is invalid for obviousness.”

Comaper argued that Antec waived its right to challenge the inconsistent verdicts because it did not raise an objection before the jury was dismissed. Because inconsistent verdicts are not an issue unique to patent law, the CAFC applied regional circuit law, in this case the law of the Third Circuit. Under Third Circuit law, when a jury returns a special verdict, as opposed to a general verdict, no contemporaneous objection prior to the dismissal of the jury is required in order to preserve the right to challenge the inconsistency on appeal. By using the inconsistent verdicts as the grounds for its post-verdict motion for a new trial, Antec preserved the issue for appeal.

The District Court had resolved the inconsistency by determining that the evidence was insufficient to support verdicts of obviousness with respect to the dependent claims because the asserted prior art was not analogous to the patented invention. Under the CAFC’s precedent in In re Clay, 966 F.2d 656, 658-659 (Fed. Cir. 1992), prior art is analogous if it is either from the same field of endeavor as the patented invention or reasonably pertinent to the particular problem with which the inventor is involved. The field of endeavor here was cooling computers and electronic components. All of the prior art references asserted by Antec involved cooling electronics using fans to draw cool ambient air, thus in the same field of endeavor as the patented invention. Thus, the District Court had erred in resolving the inconsistency because the evidence would support either of the inconsistent verdicts. Under Third Circuit law, the appropriate remedy in such a case was to order a new trial.

Because the jury’s verdict finding independent claims 1 and 12 were not obvious while dependent claims 2, 7, and 13 were obvious was irreconcilably inconsistent, the CAFC vacated the judgment and remanded the case for a new trial on invalidity.