                        Note: This disposition is nonprecedential.

  United States Court of Appeals for the Federal Circuit

                                    2006-1490, -1516


                                 MANDY N. HABERMAN

                                                      Plaintiff-Appellant,

                                            v.


                           GERBER PRODUCTS COMPANY,

                                                      Defendant-Cross Appellant.




        H. Michael Hartmann, Leydig, Voit, & Mayer, Ltd., of Chicago, Illinois, argued for
plaintiff-appellant. With him on the brief were Gregory C. Bays and Phillip M. Pippenger.

      Matthew G. Reeves, Locke Liddell & Sapp LLP, of Houston, Texas, argued for
defendant-cross appellant. With him on the brief was Michael O. Sutton.

Appealed From: United States District Court for the Western District of Wisconsin

Judge John C. Shabaz
                       NOTE: This disposition is nonprecedential.

United States Court of Appeals for the Federal Circuit

                                    2006-1490, -1516


                                MANDY N. HABERMAN,

                                                  Plaintiff-Appellant,

                                             v.

                           GERBER PRODUCTS COMPANY,

                                                  Defendant-Cross Appellant.


                               ______________________

                                DECIDED: May 29, 2007
                               ______________________


Before MICHEL, Chief Judge, GAJARSA, Circuit Judge, and ROBINSON, Chief District
Judge.*

ROBINSON, Chief District Judge.

       This is a patent infringement case dealing with spill-proof drinking containers for

children and infants, commonly referred to as Asippy cups.@ Plaintiff-appellant Mandy N.

Haberman (AHaberman@) appeals the entry of final judgment that U.S. Patent No.

6,116,457 (Athe ’457 patent@) is invalid as anticipated following a jury trial in the United

States District Court for the Western District of Wisconsin. Gerber Products Company

(AGerber@) cross-appeals the judgment of infringement. Gerber also cross-appeals the

district court=s denial of its motion to amend its answer and pleadings to assert an

       *        Honorable Sue L. Robinson, Chief Judge, United States District Court for
the District of Delaware, sitting by designation.
inequitable conduct counterclaim, and the denial of attorney fees. Because we believe

that the district court incorrectly concluded that a reasonable jury could find that the ’457

patent is invalid as anticipated, we reverse the judgment of invalidity and remand for a

determination on obviousness. Because we find that the jury had before it evidence

sufficient to support its finding of no infringement, we vacate the district court’s grant of

judgment as a matter of law on this issue and remand with instructions to enter

judgment on the verdict.     We further conclude that the district court did not err in

denying Gerber=s motion for leave to amend its pleadings or in refusing to grant Gerber

attorney fees, and affirm on those grounds.

                                  I.     BACKGROUND

A.     The Technology and Patent

       The ’457 patent covers a spill-proof trainer, or sippy cup, invented by Haberman,

who also owns the patent. The sippy cup contains a lid that is fitted to the open top of a

cup-shaped container.     The lid contains an upwardly-projecting mouthpiece with an

opening. The ’457 patent provides an improved slit valve that prevents the flow of liquid

from the interior of the cup through the mouthpiece unless a predetermined level of

suction is applied, thereby avoiding spills that would occur when the cup is shaken or

dropped by a child. The slit valve has a flexible membrane which is dished in the

direction opposite to the flow direction of the liquid. In normal conditions, the dished

membrane is closed under its own resilience. Upon the application of suction on the

mouthpiece, the flexible membrane opens, allowing the free flow of liquid through the

mouthpiece.




                                              2
2006-1490, -1516
       Claim 1, the only independent claim, reads:

       An article through which or from which a drinking liquid is taken by a
       consumer, the article having a spout provided with a valve comprising a
       membrane of resiliently flexible material, said membrane being provided
       with at least one split adapted such that the liquid may be drawn from
       or through said article by the sole application of a predetermined
       level of suction in the region of said valve, characterized in that the
       membrane has a normal condition in which it is dished inwardly of the
       article, opposite the direction through which the drinking liquid is taken in
       use of the article and is adapted to close up by returning to the normal
       inwardly dished condition under its own resilience when such suction is
       removed.

’457 patent col.4 ll.16-28 (emphasis added). The application that eventually issued as

the ’457 patent, filed September 2, 1996, did not recite the Asole application of a

predetermined level of suction@ limitation in claim 1. The examiner rejected the claims

as being anticipated by British Patent No. 2,279,130, which generally describes a

leakage-resistant valve with deformable closure elements, and as obvious in view of a

combination of references. In response, Haberman added the limitations that the slit is

adapted such that the liquid may be drawn through it Aby the sole application of a

predetermined level of suction,@ and that the valve Ais adapted to close up under its own

resilience when such suction is removed.@ Thereafter, Haberman further limited the

independent claim to require that the valve comprises a Amembrane of resiliently flexible

material.@ The examiner subsequently issued a Notice of Allowability, and the ’457

patent issued on September 12, 2000.

B.     The Accused Product and the Prior Art

       Gerber sells a line of spill-proof sippy cups for infants, as well as replacement

valves for use in its cups. Gerber=s sippy cups utilize a valve which curves inwardly

such that it is convex to the interior of the cup. The district court found that Gerber uses



                                             3
2006-1490, -1516
a valve as described in U.S. Patent No. 5,954,237 to Lampe (ALampe@ or Athe Lampe

patent@) as the valve for its sippy cups. 1 Lampe discloses a container for holding liquids

which is Aparticularly suited to the food and beverage industry, and in particular for fluids

such as isotonic and non-isotonic sports drinks.@ Lampe patent col.1 ll.59-65. The

invention of Lampe relates Aparticularly to a dispensing valve closure with an inner

seal,@ which is advantageous to maintain product integrity and protect from leakage.

Lampe patent col.1 ll.5-6; col.2 ll.1-4. Lampe teaches that Aany suitable self-sealing

valve@ can be used, a particular example being the valve described in U.S. Patent No.

5,213,236 to Brown (Athe Brown patent@ or ABrown@), which patent is incorporated by

reference. Brown discloses a self-sealing dispensing valve for packaging (Athe Brown

valve@), which is useful for viscous products such as soaps, shampoos, detergents,

cleaners, and the like.    The Brown valve includes a marginal flange that seals an

opening of the container, a valve head with an orifice which opens and closes in

response to the application and release of pressure, and a connector sleeve between

the valve flange and valve head. Brown patent col.2 ll.32-41.

C.     The Litigation Below

       Haberman filed suit against Gerber, Playtex Products, Inc. (APlaytex@), and Wal-

Mart Stores, Inc. (AWal-Mart@) in the United States District Court for the Western District

of Wisconsin for infringement of U.S. Patent Nos. 6,102,245 (Athe ’245 patent@) and the

’457 patent. Haberman reached settlement with Playtex and Wal-Mart, dismissed them

from the suit, and subsequently proceeded against Gerber.

       1
              For purposes of trial, the parties classified Gerber=s accused cups into four
categories represented by four exemplary cups, which were introduced into evidence.
In addition, Gerber introduced at trial its own patent, which depicts its accused cups.


                                             4
2006-1490, -1516
          On October 14, 2005, Gerber filed two separate motions for summary judgment,

seeking: (1) a declaration of non-infringement of independent claims 1, 5, 12, and 15 of

the ’245 patent; and (2) judgment that claims 1-2 and 4-6 of the ’457 patent are invalid

as anticipated by Lampe or, alternatively, invalid as obvious in view of Lampe alone or

Ain combination with other prior-art.@     In denying both motions, the district court

specifically found that Lampe did not anticipate the claims of the ’457 patent because

ALampe does not disclose to use a valve which operates by the sole application of

suction.@ Haberman v. Playtex Products, Inc. et al., 403 F. Supp. 2d 708, 719 (W.D.

Wis. Dec. 2, 2005). The court further noted that A[i]n fact, Lampe teaches away from

that principle disclosing that the valve is operated solely by increasing internal pressure

in the container by squeezing the sides.@ Id.

          Also on October 14, 2005, Gerber filed a motion to file a second amended

answer and counterclaims, wherein Gerber sought to allege unenforceability of

Haberman=s patents due to inequitable conduct before the United States Patent and

Trademark Office (APTO@). The district court denied Gerber=s motion on October 26,

2005, stating that granting the motion would prejudice Haberman, as Gerber Ahad the

necessary facts to proceed with its motion to amend well before the present motion was

filed.@

          The case was tried before a jury on December 19-20, 2005. Commensurate with

their respective burdens of proof, Haberman presented expert testimony on

infringement and Gerber advanced several invalidity arguments.          More specifically,

Gerber asserted at trial that: (1) the patents are obvious in view of U.S. Patent No.

5,186,347 (AFreeman et al.@) in combination with U.S. Patent No. 5,071,017 to Stull



                                            5
2006-1490, -1516
(Athe ’017 patent@); and (2) the ’457 patent is invalid as anticipated by Lampe. 2 Prior to

deliberations, the court instructed the jury to Agive the language of the terms its ordinary

meaning based on your understanding.@ Specifically with respect to the ’457 patent, the

court instructed the jury that the Asole application of suction@ limitation of claim 1 Ameans

that it is possible for a user to draw the drink from the vessel using only suction.@ The

jury returned a verdict that neither asserted patent was infringed, and that claim 1 of the

’457 patent is invalid as anticipated. Pursuant to its instructions, the jury did not reach

the question of obviousness.

       In its memorandum and order dated May 24, 2006, the district court found that

the jury=s verdict of anticipation, but no infringement, was contrary to the axiom of Athat

which infringes if later in time, anticipates if earlier in time.@ Upsher-Smith Labs., Inc. v.

Pamlab, L.C.C., 422 F.3d 1319, 1322 (Fed. Cir. 2005); Haberman v. Gerber Products

Co., No. 05-C-224-S (W.D. Wis. May 24, 2006) (AJMOL Order@).                 In an effort to

reconcile this inconsistency, the district court first found that Athe issue of anticipation

was properly resolved by the jury as a question of fact and its determination was amply

supported by the facts at trial.@    JMOL Order at 10.       Specifically, the district court

concluded that Haberman was not entitled to relief because claim 1 of the ’457 patent is

invalid as anticipated by Lampe.       Having previously concluded that Lampe did not

expressly teach a valve membrane Awith at least one slit adapted such that the liquid

       2
               Gerber presented evidence on invalidity through its expert, Gene Stull
(AStull@), inventor of the ’017 patent. Stull did not specifically testify about Lampe, but
did generally testify about the Brown valve. Haberman objected to the inclusion of
Gerber’s argument that the =457 patent is invalid as anticipated by Lampe in the special
verdict form and jury instructions, arguing that Stull=s testimony was not affirmative
evidence of anticipation. Her objection was overruled. Haberman=s motion for JMOL
was also overruled prior to submission of the case to the jury.


                                              6
2006-1490, -1516
may be drawn from or through said article by the sole application of a predetermined

level of suction@ limitation, the district court concluded that Lampe taught this limitation

inherently.

       The district court then found that, A[a]s a matter of law[,] defendant=s device has a

>membrane,= that is >inwardly dished= and returns to its condition >under its own

resilience.=@ Id. at 9. The district court rejected Gerber=s arguments that its valve is not

Ainwardly dished@ because it is Atop hat shaped@ and returned to its original shape, not

Aunder its own resilience@ but based on Aenergy stored in the valve.@ Id. at 9. The

district court concluded that Athe defendant=s device infringes as a matter of law, the

jury=s verdict in that regard was wrong as a matter of law and plaintiff is entitled to a

determination of infringement.@ Id. at 10.

       Finally, the district court denied Gerber=s motion for attorney fees, noting that the

case was Aa typical hard fought patent infringement case.@ Haberman appeals the

district court=s final judgment denying her motion for JMOL as to anticipation, and

requests that we direct the district court to enter judgment as a matter of law that claim

1 of the ’457 patent is not anticipated and is infringed, and remand for further

proceedings. Gerber cross-appeals the district court=s grant of JMOL of infringement,

and requests that we uphold the district court=s finding of invalidity of the ’457 patent.

Gerber further seeks review of the district court=s denial of its motions for leave to file its

second amended answer and counterclaims, and for attorney fees.                     We have

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




                                              7
2006-1490, -1516
                                   II.     DISCUSSION

A.     Invalidity

       This court reviews a grant or denial of JMOL without deference by reapplying the

JMOL standard. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998)

(en banc); Fed. R. Civ. P. 50(a)(1). For matters submitted to and decided by a jury, this

court will affirm a grant or reverse a denial of JMOL only Aif the jury’s factual findings are

not supported by substantial evidence or if the legal conclusions implied from the jury’s

verdict cannot in law be supported by those findings.@ Cybor Corp., 138 F.3d at 1454.

Because the denial of a JMOL motion is not specific to patent law, the law of the

regional circuit applies. Harris Corp. v. Ericcson Inc., 417 F.3d 1241, 1248 (Fed. Cir.

2005). The Seventh Circuit reviews a denial of a motion for JMOL de novo, viewing all

the evidence in the light most favorable to the non-movant. Wabanascum v. Shawano

Cty., 416 F.3d 658, 664 (7th Cir. 2005) (citations omitted). Applying this standard, we

examine the record as a whole to determine whether there was sufficient evidence from

which a reasonable jury could have returned the verdict, and do not reweigh this

evidence nor substitute our own credibility determinations for those of the jury. Id.

(citations omitted).

       The district court correctly noted that Lampe does not expressly state that its

valve can be operated Aby the sole application of a predetermined level of suction.@ 3 In



       3
              We are not persuaded by Gerber=s argument that this language is a
statement of intended use which does not limit the claim. As an initial matter,
Haberman overcame prior art rejections during prosecution by adding this description of
a membrane slit with a particular function, i.e., one that allows liquid to be drawn
through it Aby the sole application of a predetermined level of suction,@ without respect
to other means. Haberman was permitted to use functional language to limit the claims.
K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1363 (Fed. Cir. 1999) (A[F]unctional

                                              8
2006-1490, -1516
order to have found anticipation, therefore, the jury must have determined that Lampe

inherently taught this limitation. For the description of its valve, Lampe incorporated the

Brown patent by reference. Brown was before the examiner during prosecution of the

’457 patent, and did not form the basis for any rejection. See Glaxo Group Ltd. v.

Apotex, Inc., 376 F.3d 1339, 1348 (Fed. Cir. 2004) (stating that a challenger’s “burden

is ‘especially difficult’ when . . . the infringer attempts to rely on prior art that was before

the patent examiner during prosecution”).

       Notwithstanding, in support of its conclusion of inherent anticipation, the district

court found that Athe testimony made it clear that it was a matter of basic physics, which

those of skill in the art would know, that sucking and squeezing would have equivalent

effects on the Lampe valve.@ The district court found the testimony of Gerber=s witness

Timothy Socier (ASocier@) to be the Amost persuasive testimony on the topic.@

Specifically, Socier testified that squeezing a container and sucking on the outside

produces the same result:

       The valve functions based on differential pressure on one side of the valve
       to another. If you think about a squeeze bottle, a bottle of Heinz ketchup,
       for example, and the consumer is going to squeeze the container. They’re
       squeezing the bottle which is creating a higher pressure on the inside of
       the bottle and as a result there’s a lower pressure, atmospheric pressure
       is lower and so product is going to flow through the valve. On the same
       measure if you think of a child’s sippy cup, they are sucking on the
       outside. The inside of the container is at atmospheric pressure and the
       vacuum is a lower pressure so basically that lower pressure is going to
       draw the product through the valve. Basic physics.

Similarly, Stull, Gerber=s expert, testified that the valve Areally understands one thing

and that is a differential in pressure and that could be created in any number of

ways . . . squeezing, shaking, sucking, pushing . . . .@

language is, of course, an additional limitation in the claim.@).


                                               9
2006-1490, -1516
      The testimony of both Socier and Stull, as with that of Haberman=s expert, Dr.

Peter Weiss, was focused on the question of obviousness, rather than anticipation.

Nevertheless, the district court noted that the testimony of the experts was Aremarkably

consistent on the issue of whether one of skill in the art would have known that Lampe

could be operated solely by suction,@ placing emphasis on the purported Aconcession@

of Dr. Weiss that Lampe disclosed a valve which would open under a predetermined

level of suction.   Upon review, however, Dr. Weiss=s testimony regarding whether

Lampe disclosed that it could be operated by suction is unclear. Weiss first stated that

this limitation is Ashown@ in Lampe, but he then immediately backtracked and stated that

Lampe does not disclose the limitation. 4




      4
             The exchange proceeded as follows:

      Q.     [A]By the sole application of a predetermined level of suction in the region
             of the valve. Is that element shown in the Lampe [p]atent 5,954,237?
      A.     It=s shown.
      Q.     Or disclosed in?
      A.     I don=t see anything of sucking in claim 1 of Lampe.
                                           ***
      Q.     I=m not asking about the Lampe claim, sir. I=m just asking you if that would
             be something that a person of ordinary skill in the art would realize is
             meant by reading the disclosure of the Lampe ’237 patent?
      A.     No.
      ...
      Q.     So a person of ordinary skill in the art reviewing Lampe would not realize
             in your opinion that liquid may be drawn from the article by the sole
             application of suction?
      A.     No, I don=t believe it does, sir. And the reason I say that is because this B
             the way, again as a person of some skill in this art reading this would see
             that one of the essences of Lampe=s patent is that there is a seal at the
             top so it can be held on a shelf without either being tampered with or
             deteriorating. And I also understand that that valve as we see there has
             been taken directly from one of the Brown patents.


                                            10
2006-1490, -1516
      In its opinion, the district court did not point to any actual evidence presented by

Gerber that a user applying only suction could actually achieve the pressure differential

necessary to open the Brown valve.        Indeed, no evidence was introduced at trial

regarding the quantum of pressure necessary to allow the Brown valve to open by

squeezing the outside of the container, or the amount of pressure that oral suction can

generate. At most, the testimony of Socier and Stull demonstrates that applying a

predetermined level of oral suction may result in the drawing out of liquid via the Brown

valve. Such evidence falls short of clear and convincing evidence that a valve operable

by the sole application of a predetermined level of suction is necessarily present in

Lampe or, stated another way, that applying a predetermined level of suction to the

Lampe valve would inevitably result in the drawing out of liquid. See Continental Can

Co. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991) (extrinsic evidence used to

fill a gap in a reference Amust make clear that the missing descriptive matter is

necessarily present in the thing described in the reference, and that it would be so

recognized by persons of ordinary skill@) (citations omitted); In re Oelrich, 666 F.2d 578,

581 (C.C.P.A. 1981) (inherency Amay not be established by probabilities or possibilities.

The mere fact that a certain thing may result from a given set of circumstances is not

sufficient.@) (quotation omitted). In fact, Gerber=s statements to the PTO in prosecuting

its own patents lend support to the proposition that certain valves, such as the Brown

valve, are incapable of operating by suction alone. 5 Because Gerber did not introduce


      5
              During prosecution of U.S. Patent No. 5,890,621, Gerber distinguished
U.S. Patent No. 5,439,143 to Brown, a continuation of Brown ’236, by stating that
squeeze containers such as Brown Afundamentally teach directly away from a drinking
cup constructed for use by young children.@ More specifically, Gerber distinguished
over the prior art by stating that squeeze containers are Anot constructed to permit flow

                                            11
2006-1490, -1516
sufficient evidence from which a reasonable jury could have found that the Brown valve

was necessarily operable by suction, we reverse the judgment of anticipation with

respect to the ’457 patent.      The case is remanded for a jury determination on

obviousness.

B.    Infringement

      The district court granted JMOL in favor of Haberman in an attempt to harmonize

what it perceived to be an inconsistent verdict. The parties dispute whether Gerber=s

product has a valve with a Amembrane@ which is Adished inwardly@ and which is adapted

to return to the inwardly dished condition Aunder its own resilience.@ The district court

did not construe these limitations in a Markman proceeding, and no argument was

made with respect to their meanings in connection with proposed jury instructions. 6

Prior to its deliberations, the jury was instructed to Agive the language of the terms its

ordinary meaning based on your understanding.@ Applying this standard, the jury found

no infringement.

      An infringement analysis involves a two-step process:           claim construction,

followed by comparison of the claims to the accused device. N. Am. Container, Inc. v.

Plastipak Packaging, Inc., 415 F.3d 1335, 1344 (Fed. Cir. 2005). Because the district

court had not previously defined the term Amembrane,@ the district court iterated its own


through a spout in response to a vacuum within the spout.@ AStill further,@ Gerber
argued, Asqueeze-bottle arrangements dispense fluid upon pressurization of the fluid,
not in response to a vacuum within a spout.@ Though Gerber is not estopped from
making contrary arguments in this context, Gerber=s statements nonetheless indicate
that distinct differences exist between sucking and squeezing applications.
      6
              The parties do not indicate whether the district court held a Markman
hearing in this case, though it is clear that neither party identified these terms as
disputed or requested construction of these terms prior to trial.


                                           12
2006-1490, -1516
definition for that term prior to its post-trial evaluation of the evidence regarding Gerber=s

cups. In so doing, the district court stated that a Amembrane,@ as used in claim 1,

Agenerally means a relatively thin sheet of material,@ because Amembrane@ and Asheet@

are used interchangeably in the ’457 patent specification. According to the district court,

this membrane, contrary to Gerber=s assertion, can have a variance in thickness since

A[n]othing in the ordinary meaning of the term membrane or in the patentee[=s] use of

the term in the specification suggests [otherwise].@ See JMOL Order at 9. Aside from

discrediting Gerber=s argument that a membrane cannot have a variable thickness, the

district court did not rely on Dr. Weiss=s testimony or on any other evidence of record in

finding that the Gerber cups have a Amembrane.@

       The district court also found that A[t]here is no reasonable argument that the

valve [of Gerber=s product] is >inwardly dished= as that term is used in the [’457] patent.@

Id. The district court characterized Stull=s expert testimony as a Abaseless opinion,@ and

characterized as Anonsense@ Gerber=s suggestion that there is a distinction between a

valve returning to its original shape based on Aenergy stored in the valve@ versus its own

resilience. Id. Having found that Gerber=s valve Aundeniabl[y]@ returns to its original

shape by its own resiliency, the district court vacated the jury verdict and held that

Gerber=s product infringes as a matter of law. Id. at 9-10.

       We review the district court=s grant of JMOL without deference.            See Cybor

Corp., 138 F.3d at 1454. We do recognize, however, that this was a case where the

parties failed either to recognize or identify the specific issues in dispute and, therefore,

failed to present specific evidence related to these issues.        On direct examination,

Haberman=s expert, Dr. Weiss, testified that Gerber=s product has an inwardly dished



                                             13
2006-1490, -1516
valve that, under normal conditions, opens when suction is applied, and returns to its

inwardly dished condition under its own resilience when the suction is removed. Dr.

Weiss did not provide any further explanation for his conclusion. See Ashland Oil v.

Delta Resins & Refractories, 776 F.2d 281, 294 (Fed. Cir. 1985) (“Lack of factual

support for expert opinion going to factual determinations, however, may render the

testimony of little probative value in a validity determination.”) (emphasis added). In

Gerber=s rebuttal case, Stull told the jury that Gerber=s products do not infringe the

Amembrane@ limitation because the Brown valve used in the Gerber product is not a

Athin sheet of material@ and has Avarying wall thicknesses.@ Stull did not buttress this

opinion with any explanation or scientific proof. See id. Socier used a demonstrative to

illustrate the Arolling sleeve@ action of the Brown valve, and testified that the Brown valve

has four basic components: the valve flange, the valve itself (or rolling sleeve), the

valve head, and the slit. By implication, these components constitute more than a

uniformly thin sheet of material. Stull also testified that the Brown valve has a Atop hat@

shape which is not Ainwardly dished,@ as the ’457 patent claims require. Stull briefly

explained that the Brown valve does not return to its original shape under its own

resilience, but as the result of Astored energy that=s built up or created in the side walls

of that valve.@

       In view of the highly conclusory nature of the evidence adduced at trial, the

district court was left to the unenviable task of sorting through the record in an attempt

to salvage the verdict, i.e., to justify the time and resources both the court and jury spent

on the case.      The district court was not required to assume that the jury believed

Gerber=s vindicable testimony or gave it the same weight as Dr. Weiss=s testimony.



                                             14
2006-1490, -1516
Comark Comm., Inc. v. Harris Corp., 156 F.3d 1182, 1192 (Fed. Cir. 1998). The district

court, however, was required to evaluate the totality of the evidence before the jury in

examining whether a reasonable jury could have found for Gerber.          See Princeton

Biochem., Inc. v. Beckman Coulter, Inc., 411 F.3d 1332, 1336 (Fed. Cir. 2005) (AThis

court must also consider all the evidence before the jury and draw all reasonable

inferences in favor of the prevailing party on that issue, i.e., the non-movant.@ (citing

Richardson-Vicks Inc. v. Upjohn Co., 122 F.3d 1476, 1479 (Fed. Cir. 1997))); Tex.

Instruments Inc. v. Cypress Semiconductor Corp., 90 F.3d 1558, 1563 (Fed. Cir. 1996)

(substantial evidence required to overturn jury=s findings on JMOL is Asuch 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@). Having been instructed to Agive the

language of the terms its ordinary meaning based on your understanding,@ the jury was

free to apply Stull=s description of a Amembrane@ if it were consistent with the jury=s

understanding.    Likewise, the jury may have found that the ordinary meaning of

Ainwardly dished@ precluded a Atop hat shaped@ valve, or credited Stull=s testimony that

returning to the inwardly dished condition Aunder its own resilience@ did not encompass

situations where the membrane moves due to stored energy in the valve walls. Drawing

all reasonable inferences from the testimony in Gerber=s favor, the jury may have found

the testimony of Gerber=s witnesses more credible on either issue. That is, the jury=s

verdict may have stemmed from a finding that Dr. Weiss=s conclusory testimony did not

create a prima facie case of infringement, or that Stull=s and/or Socier=s testimony, even

if conclusory, sufficiently rebutted Haberman=s prima facie showing of infringement.

Because we find that the district court erred in concluding that no reasonable jury could



                                           15
2006-1490, -1516
have reached a verdict of no infringement, we vacate the district court=s grant of JMOL

on this issue and direct it to enter a judgment of non-infringement in favor of Gerber. 7

C.     Leave to File an Amended Answer and Counterclaims

       Gerber appeals the district court=s denial of leave to amend its pleadings to file a

second amended answer and assert counterclaims related to unenforceability and

inequitable conduct.    We apply the procedural law of the Seventh Circuit, 8 which

reviews denials of leave to amend a pleading for abuse of discretion.             Dubicz v.

Commonwealth Edison Co., 377 F.3d 787 (7th Cir. 2004). In so doing, we conclude

that no such abuse is present here. This case was filed in the district court on April 13,

2005. Gerber asserted a third affirmative defense of inequitable conduct in its answer;

however, it filed an amended answer on June 10, 2005 in which this allegation was

removed and substituted with a laches defense. Gerber=s second motion to amend,

therefore, was in essence one of reinstatement. Gerber filed the motion at issue on


       7
               Haberman’s position that “Gerber’s entire non-infringement case to the
jury was based on re-interpreting the claims away from their plain and ordinary
meaning[s]” is belied by the fact that Haberman failed to seek claim constructions for
the crucial terms of its claims. The district court did not err in not construing the claim
terms. See Sulzer Textil A.G. v. Picanol N.V., 358 F.3d 1356, 1367 (Fed. Cir. 2004)
(“[W]hen the parties do not dispute the claim language, but just tell the jury to use the
‘plain meaning,’ the district court is not required to add an additional layer of complexity
by ‘constructing’ the words of the claim merely to reiterate those words in a jury
instruction.” (citing United States Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1567
(Fed. Cir. 1997))). Having concluded that a reasonable jury could have returned a
verdict of no infringement, Gerber=s argument that Haberman did not properly appeal
the issue of whether the district court erred in not granting a new trial is moot, as are its
arguments regarding the propriety of the district court’s post-trial construction of the
term “membrane” in view of the ’457 patent specification.
       8
             Leave to amend is a procedural matter not unique to patent law, and this
court applies the law of the regional circuit to review denial of leave to amend. See
Ferguson Beauregard/Logic Controls, Div. of Dover Resources, Inc. v. Mega Sys. LLC,
350 F.3d 1327, 1342 (Fed. Cir. 2003).


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October 14, 2005, the day before the summary judgment deadline. Despite the court=s

prompt resolution of the issue, at that time less than 30 days remained before the close

of discovery on November 23, 2005. Haberman v. Playtex Products, Inc. et al., No. 05-

C-224-S (W.D. Wis. October 26, 2005) (order denying motion to amend).

      Gerber alleges that it was inequitable conduct to have failed to alert the PTO that

the ’245 and ’457 patents were copending with different examiners. Gerber=s assertion

that it needed discovery, more specifically, the deposition of Haberman=s prosecuting

attorney, to confirm this omission is baseless.   A simple review of the patents= file

wrappers would have confirmed the absence of such disclosure to either examiner in

response to office actions or during interviews. The district court correctly noted that

Gerber Ahad the necessary facts to proceed with its motion to amend well before the

present motion was filed.@ Id. Gerber did not need to confirm the lack of counter-

evidence of good faith to proceed with its motion, nor did it need the opinion of its

expert, as Gerber claims. With just a few weeks left in discovery, Haberman could not

have propounded discovery on Gerber=s claim under Federal Rule of Civil Procedure 30

or 34. In addition, even if it were practical for Haberman to both investigate and rebut

Gerber=s counterclaim in less than 30 days, such as by the submission of rebuttal expert

reports, Gerber=s argument ignores the fact that Haberman would have been precluded

from challenging Gerber=s counterclaim by summary judgment. We find that the district

court’s authority to manage discovery is broad enough to place this ruling within its

sound discretion.




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D.    Attorney Fees

      Gerber appeals the trial court’s refusal of attorney fees under 35 U.S.C. § 285,

which provides that reasonable attorney fees may be awarded by the court in

exceptional cases. This court applies Federal Circuit law to the issue of attorney fees in

patent infringement cases. Special Devices, Inc. v. OEA, Inc., 269 F.3d 1340, 1343

(Fed. Cir. 2001). This court reviews a denial of attorney fees under 35 U.S.C. § 285 for

an abuse of discretion, but reviews the factual determination of whether a case is

exceptional under § 285 for clear error. Serio-US Indus. v. Plastic Recovery Techs.

Corp., 459 F.3d 1311, 1321 (Fed. Cir. 2006) (citing Forest Labs., Inc. v. Abbott Labs.,

339 F.3d 1324, 1328 (Fed. Cir. 2003)).

      Gerber argues that the district court committed clear error by denying its motion

for attorney fees.    Specifically, Gerber argues that since it was precluded from

presenting evidence on inequitable conduct, the district court did not have before it

those Afacts most relevant to the determination of exceptionality.@ Since the district

court did not err in precluding Gerber=s belated inequitable conduct defense and

counterclaim, we find no error in the district court=s finding that this case was not

exceptional.

                                 III.    CONCLUSION

      For the aforementioned reasons, we reverse the judgment of invalidity and

remand for a determination on obviousness. We vacate the court’s grant of JMOL on

infringement, and direct it to enter a judgment of non-infringement in favor of Gerber.

We affirm the district court=s denial of Gerber=s motion for leave to amend its pleadings

and refusal to grant Gerber attorney fees.



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 AFFIRMED-IN-PART, REVERSED-IN-PART, VACATED-IN-PART, and REMANDED.




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