**United States Court of Appeals for the Federal Circuit**

03-1565, -1603

KOITO MANUFACTURING CO., LTD.

and NORTH AMERICAN LIGHTING, INC.,

> Plaintiffs-Cross Appellants,

v\.

TURN-KEY-TECH, LLC

and JENS OLE SORENSEN,

Defendants-Appellants.

[William H. Mandir]{.underline}, Sughrue Mion, PLLC, of Washington, DC,
argued for plaintiffs-cross appellants. With him on the brief were
[Frank L. Bernstein]{.underline}, [Steven M. Gruskin]{.underline}, [John
F. Rabena]{.underline}, and [Carl J. Pellegrini]{.underline}.

[Boris Zelkind]{.underline}, Zelkind & Shackelford LLP, of San Diego,
California, argued for defendants-appellants. With him on the brief was
[Patricia A. Shackelford]{.underline}. Of counsel on the brief was
[David R. Fairbairn]{.underline}, Kinney & Lange, P.A., of Minneapolis,
Minnesota.

Appealed from: United States District Court for the Southern District of
California

Chief Judge Marilyn L. Huff

**United States Court of Appeals for the Federal Circuit**

03-1565, -1603

Koito manufacturing Co., LTD.

and north american lighting, Inc.,

Plaintiffs-Cross Appellants,

v\.

TURN-KEY-tech, llc

and jens ole sorensen,

Defendants-Appellants.

\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_

DECIDED: August 23, 2004

\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_

Before BRYSON, GAJARSA, and DYK, [Circuit Judges]{.underline}.

GAJARSA, [Circuit Judge]{.underline}.

Turn-Key-Tech, LLC and Jens Ole Sorenson ("Turn-Key") appeal from the
denial of their motions for a new trial and a judgment as a matter of
law ("JMOL") by the United States District Court for the Southern
District of California with respect to a jury's findings (1) that Claims
1, 3, 12, 13, 15, 18, 21, 30-33, and 36 of Turn-Key's U.S. Patent No.
5,045,268 (the "'268 patent") are invalid as anticipated and obvious and
(2) that the '268 patent is not infringed by taillights produced by
Koito Manufacturing Co., Ltd. and North American Lighting, Inc.
(collectively "Koito"). [Koito Mfg. Co. v. Turn-Key-Tech,
LLC]{.underline}, No. 02-C-273 (S.D. Cal. July 16, 2003). In its
decision, the district court partially granted Turn-Key's motion for a
JMOL by overturning the jury's finding that [all]{.underline} 38 claims
of the '268 patent are invalid for lack of enablement, failure of the
written description, and a certificate of correction adding new matter.
Koito cross-appeals the district court's grant of a JMOL on these other
grounds for invalidity.

We affirm the district court's grant of Turn-Key's JMOL and agree that
Koito failed to fulfill its burden of showing that the '268 patent is
invalid for lack of enablement, failure of written description, and the
addition of new matter. We also affirm the district court's denial of
Turn-Key's new trial motion and JMOL with respect to the jury's verdict
of noninfringement. However, we vacate the district court's denial of
Turn-Key's JMOL motion with respect to anticipation and obviousness,
which the district court justified solely by reference to Japanese
Unexamined Application No. 148,082 ("JP '082"). Because Koito merely
entered the JP '082 reference into evidence and provided no specific
testimony relating to it whatsoever, we hold that Koito did not present
substantial evidence with respect to JP '082 to support the jury's
finding of anticipation and obviousness. On remand, the trial court
should evaluate the other evidence proffered by Koito to determine
whether the jury's verdicts of anticipation and obviousness were
adequately supported.

I. BACKGROUND

A. [The '268 Patent]{.underline}

The '268 patent teaches a method of strengthening injection-molded
plastics by cross-laminating layers of plastics. '268 patent, col. 1,
ll. 5-10. Injection molding involves injecting liquid plastic into a
mold cavity. The walls of the mold cavity define the final shape of the
product. The liquid plastic cools and solidifies in the mold cavity and
can then be ejected.

Injection molding technology can be used for the manufacture of a
variety of plastic goods, including cups, cassette tapes, and, in the
case of Koito's products, car taillights. The '268 patent takes
advantage of the fact that, when a plastic is injected into a mold, the
liquid plastic can be made to have a direction of flow consistent with
how the plastic entered the mold cavity. The strength of a plastic that
contains such a "flow direction" varies---the plastic is stronger across
the flow than with the flow. This quality is analogous to that of wood,
which is stronger across the grain than with the grain. To increase the
strength of plastic that contains a flow direction, the '268 patent
discloses the use of two different flow directions that overlap, i.e.,
cross-lamination.

The '268 patent has two independent claims that are at issue, Claims 1
and 21:

1\. A method of injection molding a plastic product, with a cross-
laminated section that includes a first plastic layer and a second
plastic layer, in a mold system comprising a first mold cavity with a
first-layer-defining-mold-cavity-section and a second mold cavity with a
second-layer-defining-mold-cavity-section with a
second-cavity-section-wall, the method comprising the steps of:

> \(a\) injecting a quantity of first plastic into the first mold cavity
> so that the first plastic follows in the
> first-layer-defining-mold-cavity-section in a first [predetermined
> general direction]{.underline},
>
> \(b\) solidifying at least partly the flowed first plastic in the
> first-layer-defining-mold-cavity-section to thereby form said first
> plastic layer having a first-[direction-flow-record]{.underline},
>
> \(c\) adjusting the mold system to thereby provide the second mold
> cavity with the second-cavity-section-wall including said first
> plastic layer,
>
> \(d\) injecting a quantity of second plastic into the second mold
> cavity so that the second plastic flows in the
> second-layer-defining-mold-cavity-section in a second predetermined
> general direction, whereby the second plastic in the
> second-layer-defining-mold-cavity-section fuses with said first
> plastic layer,
>
> \(e\) solidifying the flowed second plastic in the second-layer-
> defining-mold-cavity-section to thereby form said second plastic
> layer, so that the second plastic layer has a
> second-direction-flow-record which is positively different from said
> first-direction-flow-record, to thereby form said plastic product with
> said cross-laminated section that includes both the first plastic
> layer and the second plastic layer, and
>
> \(f\) adjusting the mold system to thereby eject the product,

wherein the first mold cavity comprises a first-cavity-flow-channel
which is located adjacent the first-layer-defining-mold-cavity-section,
with a [flow channel being defined as a portion of a mold cavity which
is significantly thicker and wider than the adjacent mold cavity
thickness for the purpose of directing the flow of injected
plastic]{.underline}, and wherein step (a) comprises the step of:

> \(g\) directing the first plastic into the
> first-layer-defining-mold-cavity-section via the
> first-cavity-flow-channel, so that the first plastic flows in the
> first-cavity-flow-channel in a direction which is positively different
> from said first predetermined general direction.

'268 patent, col. 8, ll. 11-61 (emphasis added).

Independent Claim 21 is identical to Claim 1 except for steps (f) and
(g):

> \(f\) adjusting the mold system to thereby eject the product,

wherein the second mold cavity comprises a second-cavity-flow-channel
which is located adjacent said
second-layer-defining-mold-cavity-section, with a flow channel being
defined as a portion of a mold cavity which is significantly thicker and
wider than the adjacent mold cavity thickness for the purpose of
directing the flow of injected plastic, and wherein step (d) comprises
the step of:

> \(g\) directing second plastic into the second-layer-defining-mold-
> cavity-section via the second-cavity-flow-channel, so that the second
> plastic flows in the second-cavity-flow-channel in a direction which
> is positively different from said second predetermined general
> direction.

[Id.]{.underline} at col. 10, ll. 53-68; col. 11, ll. 1-35. Claim 21
thus requires a flow channel in the [second]{.underline} mold cavity to
redirect the flow of the plastic, rather than in the [first]{.underline}
mold cavity.

Figures 1 and 2 below help to illustrate the method claimed in the '268
patent. Mold system 7 includes two complementary mold sections, labeled
8 and 9. Mold cavity 1 is the space between these mold sections, and
includes a flow channel 6 that is wider and deeper than the adjacent
cavity 2. Because of the dimensions of the flow channel 6, the plastic
passes easily through the flow channel and then changes direction in a
predictable way when it encounters resistance by entering into the rest
of the narrower cavity. The liquid plastic therefore flows into the
layer-defining-mold-cavity-section 2 in a predetermined direction and
produces a plastic layer 13 that has a direction of flow.

![](media/image1.png){width="4.658333333333333in"
height="1.2243055555555555in"}

Once the plastic has solidified in the first mold system, the mold
system is changed. Mold section 8 is removed, and mold section 9 and the
first plastic layer 13 are put into contact with mold section 11. This
forms a new mold system 10, which has a new mold cavity 3 that is then
filled. Plastic is injected and flows into the
layer-defining-mold-cavity-section 4 in a predetermined second direction
that is different than the direction of flow used for the first plastic
layer. As the second plastic layer solidifies, it fuses with the first
plastic layer and thereby forms a cross-laminate.

![](media/image1.png){width="4.440972222222222in"
height="1.1444444444444444in"}

B. [Litigation]{.underline}

Koito manufactures taillights for several Japanese automakers. A
taillight consists of three main components: a lens, a housing, and a
lamp. At issue in this case are the lenses produced by Koito, which are
made using injection molding techniques.

In February 2002, Koito brought a declaratory judgment action against
Turn-Key requesting that the '268 patent be declared invalid,
unenforceable, and not infringed by Koito's lenses. At the time it filed
its declaratory judgment action, Koito alleged that Turn-Key had accused
Koito of infringement and already filed suit against some of Koito's
customers.[^1] Koito set forth a number of grounds for declaring the
'268 patent invalid, including: (1) anticipation; (2) obviousness; (3)
failure of written description; (4) failure to disclose best mode; (5)
lack of enablement; and (6) the impermissible addition of new matter
through a certificate of correction. In response to the declaratory
judgment action, Turn-Key counterclaimed for infringement.

The district court conducted a Markman hearing and construed, among
other terms, the claim language "predetermined general direction" and
first- and second- "direction-flow-record." In its construction of the
term "predetermined general direction," the court found that
"predetermined" should be given its ordinary meaning, which the court
found to be "determined beforehand." The district court thus found
"predetermined general direction" to require that the prevalent
direction of the plastic flow be determined before the injection of the
liquid plastic into the mold. The district court then construed the term
"flow record," finding that a flow record must be distinguished from the
"predetermined general direction." The district court then construed
"flow record" to refer to a preserved record of the predetermined
general direction of flow created when the plastic layer solidifies or
partially solidifies in the mold.

After the Markman hearing, the district court denied Koito's motions for
summary judgment of invalidity and noninfringement and scheduled trial.
At the close of evidence, the district court granted a directed verdict
as to Koito's motion of noninfringement of dependent claims 3, 13, and
31 of the '268 patent. In addition, the court granted a directed verdict
as to Turn-Key's motion that it did not fail to disclose its best mode.
Neither party appeals these directed verdicts.

On April 25, 2003, the jury issued a special verdict finding the patent
invalid and not infringed. The jury found [all]{.underline} of the
claims of the '268 patent to be invalid for lack of enablement, lack of
written description, and the addition of new matter through a
certificate of correction. As for anticipation and obviousness, the jury
was instructed to determine only whether Claims 1, 12, 15, 18, 21, 30,
32, 33, and 36 were anticipated or obvious. The jury found these nine
claims to be both anticipated and obvious with respect to the prior art.

Turn-Key moved for a JMOL, which the district court granted in part. The
district court upheld the finding of invalidity on the bases of
anticipation and obviousness, but granted the JMOL motion as to the
other invalidity grounds for the jury's decision; the district court's
decisions on JMOL thus resulted in Claims 2, 4-11, 14, 16-17, 19-29, 32,
34-35, and 37-38 being held to not be invalid. Turn-Key also moved for a
new trial on the basis that the jury's verdicts of invalidity and
infringement were against the great weight of evidence presented at
trial. The district court denied the new trial motion.

Turn-Key appeals to this Court, arguing that the district court altered
the claim construction of the terms "flow record" and "predetermined
general direction" in upholding the jury's noninfringement verdict.
Additionally, Turn-Key insists that Koito did not meet its burden of
showing anticipation or obviousness by clear and convincing evidence at
trial.

Koito cross-appeals the district court's grant of a JMOL as to the
jury's findings of invalidity of all the claims of the patent for
failure of written description, lack of enablement, and the addition of
new matter through a certificate of correction. Koito thus seeks to
invalidate every claim of the '268 patent.

This Court has jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

II\. DISCUSSION

A. [Standard of Review]{.underline}

Turn-Key asks us to review the district court's denial of its new trial
motion with respect to the jury's verdicts of noninfringement and
invalidity. We review the denial of a motion for a new trial under the
law of the regional circuit, in this case the Ninth Circuit. [Southwest
Software, Inc. v. Harlequin Inc.]{.underline}, 226 F.3d 1280, 1290 (Fed.
Cir. 2000). The Ninth Circuit will reverse the denial of a motion for a
new trial if the verdict is "contrary to the clear weight of the
evidence, or is based upon evidence which is false, or to prevent, in
the sound discretion of the trial judge, a miscarriage of justice."
[United States v. 4.0 Acres of Land]{.underline}, 175 F.3d 1133, 1139
(9th Cir. 1999); [see also]{.underline} [Hanson v. Shell Oil
Co.]{.underline}, 541 F.2d 1352, 1359 (9th Cir. 1976); [Moist Cold
Refrigerator Co. v. Lou Johnson Co.]{.underline}, 249 F.2d 246, 256 (9th
Cir. 1957). In general, a new trial motion is not granted unless the
reviewing court "is left with the definite and firm conviction that a
mistake has been committed." [Landes Constr. Co. v. Royal Bank of
Can.]{.underline}, 833 F.2d 1365, 1372 (9th Cir. 1987).

On appeal, both parties also ask us to review the district court's
decisions with respect to Turn-Key's JMOL. We review the denial or grant
of a JMOL following a jury verdict by reapplying the district court's
standard of review. [SIBIA Neurosciences, Inc. v. Cadus Pharm.
Corp.]{.underline}, 225 F.3d 1349 (Fed. Cir. 2000). The party requesting
the JMOL, in this case Turn-Key, must show that substantial evidence did
not support the jury's findings, where substantial evidence is "such
relevant evidence from the record taken as a whole as might be accepted
by a reasonable mind as adequate to support the finding under review."
[Tex. Instruments Inc. v. Cypress Semiconductor Corp.]{.underline},
90 F.3d 1558, 1563 (Fed. Cir. 1996). The Court must also consider all
the evidence before the jury and draw all reasonable inferences from the
evidence in the light most favorable to the prevailing party on that
issue, i.e., the non-movant. [Richardson-Vicks Inc. v. Upjohn
Co.]{.underline}, 122 F.3d 1476, 1479 (Fed. Cir. 1997). In this case, we
must determine whether the jury had substantial evidence upon which to
conclude that Koito met its burden of showing invalidity by clear and
convincing evidence.

Anticipation is a factual determination that is reviewed for substantial
evidence when decided by a jury. [See]{.underline} [Acromed Corp. v.
Sofamor Danek Group, Inc.]{.underline}, 253 F.3d 1371, 1378-79 (Fed.
Cir. 2001). When reviewing a jury's verdict on obviousness, however, we
review the "conclusions on obviousness, a question of law, without
deference, and the underlying findings of fact, whether explicit or
implicit within the verdict, for substantial evidence." [LNP Eng'g
Plastics, Inc. v. Miller Waste Mills, Inc.]{.underline}, 275 F.3d 1347,
1353 (Fed. Cir. 2001).

Whether a specification complies with the written description
requirement of 35 U.S.C. § 112, ¶ 1, is a question of fact reviewed for
substantial evidence by this Court. [Union Oil v. Atl. Richfield
Co.]{.underline}, 208 F.3d 989, 996 (Fed. Cir. 2000). Enablement is a
matter of law that we review without deference; however, this Court
reviews the factual underpinnings of enablement for substantial
evidence. [BJ Servs. Co. v. Halliburton Energy Servs.,
Inc.]{.underline}, 338 F.3d 1368, 1371-72 (Fed. Cir. 2003).

B. [Infringement]{.underline}

In considering Turn-Key's motion for a new trial on the jury's finding
of non-infringement, the district court compared its claim construction
to Koito's evidence and determined that a reasonable juror could have
found that Koito's methods and lenses lacked at least two claim
limitations, that of a "predetermined general direction" and a "flow
record." The district court thus concluded that the jury's finding of
noninfringement was not against the great weight of the evidence and
denied Turn-Key's motion.

We affirm. Infringement requires that every limitation of a claim be
met, either literally or equivalently, by the accused device.
[Warner-Jenkinson Co. v. Hilton Davis Chem. Co.]{.underline}, 520 U.S.
17, 29 (1997). On appeal, Koito argues that it put forth sufficient
evidence at trial that its taillights did not meet many of the claim
limitations, including "flow record," "predetermined general direction,"
"flow channel," and "cross-laminated section." For our purposes, it is
enough to evaluate only one claim limitation required by all asserted
claims of the '268 patent: "predetermined general direction."

On appeal, Turn-Key disputes the claim construction of "predetermined
general direction" used by the district court in its post-trial
evaluation of Koito's evidence. The district court construed
"predetermined general direction" to mean that the flow direction must
be chosen or known before injection. Turn-Key argues that "predetermined
general direction" instead means a direction predetermined by the shape
of the mold cavity.

As Koito points out, however, Turn-Key's interpretation of
"predetermined general direction" was repeatedly rejected by the
district court even before the court reviewed Turn-Key's JMOL motion. In
its claim construction order, the district court explained that the mold
cavity design must "be [arranged]{.underline} to result in a
predetermined prevalent flow direction." [Koito Mfg. Co. v.
Turn-Key-Tech, LLC]{.underline}, No. 02-C-273 (S.D. Cal. Nov. 14, 2002)
(emphasis added). In a subsequent order, the district court further
clarified that "predetermined" required intent or foreknowledge in the
fixing of plastic flow direction. [Koito Mfg. Co. v. Turn-Key-Tech,
LLC]{.underline}, No. 02-C-273 (S.D. Cal. Mar. 5, 2003). Noting that
"Turn-Key appears to be operating under a mistaken understanding of the
court's construction of 'predetermined general direction,'" the court
explained that, while the "relative cavity dimensions and injection
parameters are the tool whereby the designer ensures" the flow
direction, the direction must "still be determined, i.e., chosen or at
least known, in advance of injection."

Turn-Key now attempts to object to the claim construction applied by the
district court consistently throughout the litigation. Turn-Key did not,
however, preserve its claim construction argument at trial and also did
not object to the jury's instructions on this claim term.[^2] Because it
failed to preserve its rights, Turn-Key is not permitted to contest the
construction of "predetermined general direction" in this Court. [Abbott
Labs. v. Syntron Bioresearch, Inc.]{.underline}, 334 F.3d 1343, 1352
(Fed. Cir. 2003). If Turn-Key had wanted a different construction for
"predetermined general direction," i.e., one that stated that the
determination of the flow direction could be entirely unknown to the
mold designer, it should have objected at trial.

Koito put forth sufficient testimonial evidence showing that it did not
predetermine or know beforehand the direction of flow for its lenses.
Specifically, Koito's independent expert Dr. David Kazmer testified that
Koito was not concerned with flow directions for its products and did
not know the direction of flow for its taillights before injecting
plastic into the molds. Dr. Kazmer testified that he reviewed design
documents for every accused lens and saw no indication that Koito was
trying to achieve a particular flow direction. Koito also put forth
testimony from Donald Hall, the molding general foreman for North
American Lighting. Mr. Hall testified that his company did not attempt
to cross plastic flows and that any such crossing would be a "random
event" that was not predetermined. This evidence alone is sufficient to
support both the jury's finding of noninfringement and the district
court's refusal to grant a new trial on the issue of infringement.

C. [Anticipation and Obviousness]{.underline}

In reviewing Turn-Key's motion for a new trial and JMOL motion with
respect to anticipation and obviousness, 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." The district court then expressly declined to
review any of the other evidence of prior art products and references
put forth by Koito at trial. Based on its finding of anticipation, the
district court then affirmed the jury's verdict of obviousness, given
that "anticipation is the ultimate of obviousness," [In re Baxter
Travenol Labs.]{.underline}, 952 F.2d 388, 391 (Fed. Cir. 1991).

On appeal, Turn-Key argues that the district court erred in affirming
that the '268 patent was anticipated and rendered obvious by the JP '082
reference because Koito merely submitted that reference into evidence
and made no specific mention of it at trial. Turn-Key thus insists that
the district court should have granted its motion for JMOL on the issues
of anticipation and obviousness.

We agree with Turn-Key that the district court erred in finding Koito's
evidence regarding the JP '082 reference to be sufficient to meet
Koito's burden of showing anticipation by clear and convincing evidence.
At the same time, however, we note that Koito presented an array of
other evidence at trial that the district court has not yet reviewed and
examined. Because the district court has not considered Koito's evidence
other than that of the JP '082 reference, we vacate the district court's
denial of Turn-Key's motion for JMOL on the issue of anticipation and
obviousness and remand for further proceedings as to whether sufficient
evidence supported the jury's findings of anticipation and obviousness.

1.  [JP '082]{.underline}

To establish anticipation, Koito was required to prove that the JP '082
reference met the limitations of the claims in the '268 patent. [Dayco
Prods., Inc. v. Total Containment, Inc.]{.underline}, 329 F.3d 1358,
1368 (Fed. Cir. 2003). Koito thus shouldered what this Court has
referred to as "an especially heavy burden" when it challenged the
validity of the '268 patent. [N.V. Akzo v. E.I. DuPont de
Nemours]{.underline}, 810 F.2d 1148, 1150-51 (Fed. Cir. 1987).

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. As Turn-Key points
out, Koito did not even mention the JP '082 reference after introducing
it into evidence. Instead, Koito's expert, Dr. David Kazmer, offered a
conclusion of invalidity relating to a quintet of prior art patents
which included JP '082.[^3] Specifically, Dr. Kazmer testified 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.

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.

[Schumer v. Lab. Computer Sys., Inc.]{.underline}, 308 F.3d 1304,
1315-16 (Fed. Cir. 2002). General and conclusory testimony, such as that
provided by Dr. Kazmer in this case, does not suffice as substantial
evidence of invalidity. [See, e.g.]{.underline}, [id.]{.underline}
(stating that "to accept confusing or generalized testimony as evidence
of invalidity is improper"); [Minn. Mining & Mfg. Co. v. Chemque,
Inc.]{.underline}, 303 F.3d 1294, 1305-08 (Fed. Cir. 2002) (finding
insufficient evidence to support jury's verdict of invalidity where,
among other failings, the patent challenger did not put forth evidence
that the reference was enabled). This is so even when the reference has
been submitted into evidence before the jury. Because Koito failed to
articulate how the JP '082 reference anticipates or makes obvious the
'268 patent, it has not presented sufficient evidence for the jury with
respect to the JP '082 reference.[^4]

2\. [Other Evidence]{.underline}

In its appeal, Turn-Key asks us not only to conclude that Koito's
evidence with respect to the JP '082 reference was insufficient, but
also to conclude that all of the other evidence Koito put forth at trial
is similarly inadequate to show anticipation or obviousness. We decline
to do so. Koito presented multiple theories at trial to show
anticipation and obviousness. One such theory was that, if the jury
found that Koito's lenses infringed, then the '268 patent was invalid
because of anticipation by prior art taillights that used the same
method as that used by Koito. Because the jury found Koito's lenses to
not infringe the '268 patent and also that the '268 patent was invalid,
the only consistent way to interpret the jury's verdict is to determine
that the jury did not find the prior art taillights to anticipate the
'268 patent. Moreover, this court has made clear that there is no
"practicing the prior art" defense to literal infringement.
[See]{.underline} [Tate Access Floors, Inc. v. Interface Architectural
Res., Inc.]{.underline}, 279 F.3d 1357, 1365 (Fed. Cir. 2002); [Baxter
Healthcare Corp. v. Spectramed, Inc.]{.underline}, 49 F.3d 1575, 1583
(Fed. Cir. 1995). We therefore reject Koito's evidence of anticipation
with respect to the prior art automobile lenses.

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.

D. [Koito's Cross-Appeal]{.underline}

Koito cross-appeals the district court's grant of a JMOL as to the
jury's findings that the '268 patent lacked enablement, failed to
satisfy the written description requirement of 35 U.S.C. § 112, ¶ 1, and
added new matter in a certificate of correction. We affirm the district
court's determinations on these issues.

1\. [New Matter]{.underline}

Koito argues that the '268 patent is invalid because Turn-Key amended
the '268 patent specification in a manner that Koito states is
unsupported by the original specification. The certificate of correction
for the '268 patent altered the definition of the thickness of the flow
channel in the description of the first and second embodiments of the
invention. For example, the patent originally disclosed that the second
mold cavity section 24 has a thickness G that is at least as thick as
the flow channel 26 with thickness H. The certificate of correction then
clarified that thickness G is at least as thick as the flow channel 26
minus the first-layer-defining mold-cavity section 22.

![](media/image2.jpeg){width="6.047916666666667in"
height="1.1694444444444445in"}

![](media/image2.jpeg){width="6.047916666666667in"
height="1.1097222222222223in"}

The effect of this correction was to redefine the flow channel. Before
the correction, the flow channel could have been considered to be only
the protrusion from the first-layer-defining mold-cavity section 22.
After the correction, however, the flow channel was considered to have
the depth of that section and the protrusion. According to Koito, this
change was not supported by the patent application and broadened the
scope of the claims.

A change to correct an error is not considered new matter if "one
skilled in the art would appreciate not only the existence of an error
in the specification but what the error is." [In re Oda]{.underline},
443 F.2d 1200, 1206 (CCPA 1971). In the present case, the original
description filed by Turn-Key would have excluded the second preferred
embodiment as shown in Figures 4 and 5, because all the claims in the
patent require a flow channel that is thicker and wider than the
adjacent cavity. Because the amended material is inherently contained in
the original application, it cannot constitute new matter. [Schering
Corp v. Amgen Inc.]{.underline}, 222 F.3d 1347, 1352 (Fed. Cir. 2000).
The district court therefore did not err in concluding that, as a matter
of law, Turn-Key did not impermissibly broaden the scope of the '268
patent through its certificate of correction.

2\. [Written Description]{.underline}

On appeal, Koito also argues that the limitation that the flow channel
be "significantly thicker and wider" finds no support in the written
description. To support this theory, Dr. Kazmer testified that, because
Figures 4 and 5 do not show channels that are significantly thicker and
wider than the adjacent mold cavities, one of ordinary skill in the art
would not have considered this feature part of the invention.

We agree with the district court that Dr. Kazmer's testimony was
conclusory and also in error given that it ignored the teachings of
Figure 1. This Court has interpreted 35 U.S.C. § 112, ¶ 1, to require
the patent specification to "describe the claimed invention so that one
skilled in the art can recognize what is claimed." [Enzo Biochem, Inc.
v. Gen-Probe Inc.]{.underline}, 323 F.3d 956, 968 (Fed. Cir. 2002). In
evaluating whether a patentee has fulfilled this requirement, our
standard is that the patent's "disclosure must allow one skilled in the
art 'to visualize or recognize the identity of' the subject matter
purportedly described." [Id.]{.underline} (quoting [Regents of Univ. of
Cal. v. Eli Lilly & Co.]{.underline}, 119 F.3d 1559, 1573 (Fed. Cir.
1997)); [see also]{.underline} [Cordis Corp. v. Medtronic AVE,
Inc.]{.underline}, 339 F.3d 1352, 1364 (Fed. Cir. 2003).

Terms need not be used in haec verba, however. [Eiselstein v.
Frank]{.underline}, 52 F.3d 1035, 1038 (Fed. Cir. 1995) ("The prior
application need not describe the claimed subject matter in exactly the
same terms as used in the claims. . . ."). Instead, we have explained
that the written description requirement can be satisfied by "words,
structures, [figures]{.underline}, [diagrams]{.underline}, formulas,
etc." [Lockwood v. Am. Airlines, Inc.]{.underline}, 107 F.3d 1565, 1572
(Fed. Cir. 1997) (emphasis added).

In the present case, Figure 1 of the '268 patent clearly shows that flow
channel 6 is "significantly thicker and wider" than the adjacent mold
cavity 2. Figure 1 thus demonstrates that the inventor was "in
possession" of the patent claims, including the claim limitation
speaking to the relative dimensions of the flow channel, and thus that
the written description requirement was satisfied. [See]{.underline}
[Vas-Cath Inc. v. Mahurkar]{.underline}, 935 F.2d 1555, 1563-64 (Fed.
Cir. 1991).

![](media/image1.png){width="4.658333333333333in"
height="1.1979166666666667in"}

We thus affirm the district court's determination that, as a matter of
law, the limitation "significantly thicker and wider" finds adequate
support in Figure 1 of the written description of the patent. Dr.
Kazmer's conclusory testimony to the contrary, which ignores the
embodiment of the invention described by Figure 1, is thus insufficient
to show failure of written description.

3\. [Enablement]{.underline}

As the final argument of its cross-appeal, Koito contends that the '268
patent was not enabled because it failed to detail (1) Turn-Key's
formula for predetermining flow direction and (2) injection parameters
and gate sizes. Patents are required to "teach those skilled in the art
how to make and use the full scope of the claimed invention without
'undue experimentation.'" [Genentech Inc. v. Novo Nordisk
A/S]{.underline}, 108 F.3d 1361, 1365 (Fed. Cir. 1997). Because Koito
produced no evidence that the trial and error required to practice the
claimed invention would be unduly laborious or beyond the reach of one
of ordinary skill in the art, we affirm the district court's grant of
Turn-Key's JMOL on the issue of enablement.

Koito argues that the '268 patent was not enabled because Turn-Key used
a proprietary formula for achieving the claimed predetermined direction
of flow in a mold cavity and yet did not disclose this formula in the
patent. While this evidence may go to best mode,[^5] it does not
demonstrate that any certain formula for achieving flow direction was
required for one of ordinary skill in the art to practice the claimed
invention or that undue experimentation would be required for one of
ordinary skill in the art to predetermine flow direction through trial
and error. Without such evidence, the jury's verdict of lack of
enablement is not sufficiently supported.

Koito also argues on appeal that certain details used by Turn-Key, such
as injection parameters and gate size, were necessary for one of skill
in the art to practice the claimed invention without undue
experimentation. We again find that Koito failed to put forth clear and
convincing evidence at trial that knowledge of such production details
was necessary to practice the claimed invention without undue
experimentation. In contrast to the absence of evidence by Koito,
Turn-Key presented evidence by the inventor of the '268 patent that
these details were omitted from the patent because they are "standard in
the industry." This Court has repeatedly explained that a patent
applicant does not need to include in the specification that which is
already known to and available to one of ordinary skill in the art.
[Paperless Accounting, Inc. v. Bay Area Rapid Transit Sys.]{.underline},
804 F.2d 659, 664 (Fed. Cir. 1986); [In re Howarth]{.underline}, 654
F.2d 103, 105 (CCPA 1981) ("An inventor need not, however, explain every
detail since he is speaking to those skilled in the art."); [In re
Lange]{.underline}, 644 F.2d 856, 863 (CCPA 1981). We thus have noted
that "\[n\]ot every last detail is to be described, else patent
specifications would turn into production specifications, which they
were never intended to be." [In re Gay]{.underline}, 309 F.2d 769, 774
(CCPA 1962). Unless there is evidence to the contrary, therefore, the
lack of certain production details does not indicate failure of
enablement. [See]{.underline} [DeGeorge v. Bernier]{.underline}, 768
F.2d 1318, 1323 (Fed. Cir. 1985). In the present case, Koito simply did
not provide evidence at trial that the production details omitted would
have made one of ordinary skill in the art unable to practice the
claimed invention without undue experimentation.

We have reviewed Koito's other arguments and find that, in the present
case, Koito failed to shoulder its burden of showing lack of enablement
by clear and convincing evidence before the jury. The district court
therefore did not err in granting Turn-Key's JMOL with respect to the
jury's finding that the '268 patent was not enabled.

III\. CONCLUSION

We affirm (1) the jury's verdict that Koito did not infringe the '268
patent and (2) the district court's grant of a JMOL with respect to the
jury's finding that the '268 patent was not enabled, did not meet the
written description requirement, and impermissibly added new matter.
However, we vacate the district court's denial of Turn-Key's JMOL with
respect to anticipation and obviousness. On remand, the district court
should evaluate the evidence proffered by Koito other than JP '082 to
determine whether the jury's verdict of anticipation and obviousness was
adequately supported. For the reasons herein discussed, the decision of
the district court is thus

[Affirmed-in-part, VACATED-in-part, and remanded]{.underline}.

Costs

No costs.

[^1]: Suits against automakers Nissan, Honda, Toyota, Mitsubishi, and
    Isuzu, among many others, remain pending in the district courts.

[^2]: The jury instruction stated that the "predetermined general
    direction" means the "prevalent direction of flow [determined
    before]{.underline} injection of the liquid plastic into the mold."
    (Emphasis added). The instruction thus connotes an element of
    forethought and planning, which we note is a logically essential
    part of the patent. The mold designer must be aware of the flow
    direction that will result upon an injection of plastic so that he
    can assure himself that the next flow direction will be different.
    We have held that the construction of a patent term may require an
    actor to have knowledge of certain facts. [See]{.underline}
    [Combined Sys., Inc. v. Def. Tech. Corp. of Am.]{.underline}, 350
    F.3d 1207, 1211-14 (Fed. Cir. 2003) (construing "forming folds" to
    require "the deliberate and systematic creation of folds"). In the
    present case, Turn-Key chose to limit its claims with a scienter
    requirement and thus was correctly required to demonstrate
    foreknowledge of flow directions to prove infringement.

[^3]: The other patents were U.K. Patent App. No. 2,205,304, U.S. Patent
    No. 3,543,338, U.S. Patent No. 4,118,051, and Japanese Laid-open
    Patent Pub. No. 58-82401. Koito's expert testified in significantly
    more detail about the prior art patent application of Japanese
    Unexamined Utility Model App. No. 113886/1989, as is discussed
    [infra]{.underline} in Part II.B.2.

[^4]: The district court erred in concluding that explanatory testimony
    relating the JP '082 reference to the '268 patent was unnecessary
    because of this Court's decisions in [Union Carbide Corp. v.
    American Can Co.]{.underline}, 724 F.2d 1567 (Fed. Cir. 1991), and
    [Monsanto Co. v. Mycogen Plant Science, Inc.]{.underline}, 261 F.3d
    1356 (Fed. Cir. 2001). In [Union Carbide]{.underline}, this Court
    affirmed a district court's grant of summary judgment of invalidity
    of a patent covering a very simple means and method of dispensing
    plastic bags. 724 F.2d at 1568. In that decision, even though the
    alleged infringer did not provide explanatory expert testimony
    regarding the prior art references, we found anticipation because
    the references and the patent were "easily understandable" and the
    [patentee]{.underline}, rather than the alleged infringer, provided
    explanatory analysis regarding the prior art references.
    [Id.]{.underline} at 1573. The JP '082 patent is not an "easily
    understandable" patent.

    Our decision in [Mycogen]{.underline} is likewise inapplicable. In
    [Mycogen]{.underline}, we held that "there is no general requirement
    that a party necessarily provide explanatory argument linking the
    evidence to each of the various elements of a legal theory." 261
    F.3d at 1366. This rule, however, was articulated in the context of
    a priority contest, and has its exceptions. For example, we require
    the party alleging infringement under the doctrine of equivalents to
    present argument linking the evidence of equivalence to the three
    legal elements of function, way, and result. [Lear Siegler, Inc. v.
    Sealy Mattress Co. of Mich., Inc.]{.underline}, 873 F.2d 1422, 1425
    (Fed. Cir. 1989); [Nestier Corp. v. Menasha Corp.-Lewisystems
    Div.]{.underline}, 739 F.2d 1576, 1579 (Fed. Cir. 1984). As with
    doctrine of equivalents, in the present case, we hold that Koito
    needed some explanatory testimony or other evidence to compare JP
    '082 with the patent at issue given that the JP '082 reference is a
    technical patent document describing a novel plastic manufacturing
    process.

[^5]: As noted before, Koito does not appeal the district court's
    directed verdict as to best mode.