Addressing the sufficiency of a trial court’s opinion, the U.S. Court of Appeals for the Federal Circuit vacated-in-part and remanded the case for a more detailed infringement analysis. Golden Blount, Inc. v. Robert Peterson Co., Case No. 03-1298 (Fed. Cir. Apr. 19, 2004) (Linn, J.) (Newman, J., concurring in-part and dissenting in-part).
Golden Blount brought a patent infringement suit against Peterson. Following a three-day bench trial, the trial court rendered its opinion concluding, among other things, that Peterson infringed certain claims of the patent; Peterson’s infringement was willful; prosecution history estoppel did not preclude the application of the doctrine of equivalents; the case was exceptional, warranting the award of lawyers’ fees; and Golden Blount was entitled to lost profit damages.
Peterson appealed, arguing that the court erred in its claim construction and the conclusion of literal infringement was not supported by any evidence; the court’s findings of contributory and induced infringement were erroneous because the court applied incorrect standards and because there was no evidence supported the court’s findings; and prosecution history estoppel precludes a finding of infringement. In the alternative, Peterson argued that the court’s conclusion of infringement was flawed because its application of the doctrine of equivalents vitiated a claim limitation.
The Federal Circuit agreed with the trial court’s claim construction, but found the court did not provide sufficient findings of fact or analysis in its opinion to "explain how the limitations of the claims, as construed, compare to the allegedly infringing device." The Federal Circuit admonished that a trial court’s opinion "must include as many of the subsidiary facts as are necessary to disclose ... the steps by which the trial court determined factual issues and reached its ultimate conclusions." The Federal Circuit concluded that the trial court’s judgments as to literal infringement, contributory infringement, induced infringement and infringement under the doctrine of equivalents were insufficient. Accordingly, the Federal Circuit vacated and remanded those portions of the trial court’s opinion with instructions to provide specific factual findings. Because it vacated the judgment with respect to all aspects of infringement, the Federal Circuit also vacated and remand the judgment as to willfulness, the exceptional nature of the case and damages.
In a separate opinion, Judge Newman noted that Peterson did not argue that the district court failed to provide an adequate analysis of infringement, and Peterson never asked for greater detail regarding the findings or conclusions of the district court. Judge Newman stated that "[i]f Peterson can establish that the findings and conclusions are not supported by law or evidence, then reversal is required—not remand for more findings." In Judge Newman’s view, the panel should not sua sponte remand the case for a "longer opinion."
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