                          UNPUBLISHED

UNITED STATES COURT OF APPEALS
                FOR THE FOURTH CIRCUIT


CONMED CORPORATION; ASPEN               
LABORATORIES, INCORPORATED,
               Plaintiffs-Appellants,
                 v.                              No. 99-1463

LARSON & TAYLOR,
              Defendant-Appellee.
                                        
CONMED CORPORATION; ASPEN               
LABORATORIES, INCORPORATED,
                Plaintiffs-Appellees,
                 v.                              No. 99-1514

LARSON & TAYLOR,
             Defendant-Appellant.
                                        
           Appeals from the United States District Court
         for the Eastern District of Virginia, at Alexandria.
               Claude M. Hilton, Chief District Judge.
                          (CA-98-279-A)

                      Argued: December 2, 1999
                      Decided: October 31, 2002

      Before WIDENER and MICHAEL, Circuit Judges and
              HAMILTON, Senior Circuit Judge.



Affirmed by unpublished opinion. Judge Widener wrote the opinion,
in which Judge Michael and Senior Judge Hamilton joined.
2               CONMED CORPORATION v. LARSON & TAYLOR
                                 COUNSEL

ARGUED: Alan J. Pierce, HANCOCK & ESTABROOK, L.L.P.,
Syracuse, New York, for Appellants. David P. Durbin, JORDAN,
COYNE & SAVITS, L.L.P., Washington, D.C., for Appellee. ON
BRIEF: Stephen G. Cochran, THE JEFFERSON LAW FIRM,
P.L.C., McLean, Virginia, for Appellants.



Unpublished opinions are not binding precedent in this circuit. See
Local Rule 36(c).


                                 OPINION

WIDENER, Circuit Judge:

   Appellants ConMed Corporation (ConMed) and Aspen Laborato-
ries, Inc. (Aspen) appeal the district court’s grant of Appellee’s, Lar-
son & Taylor, motion for summary judgment. Because Larson &
Taylor’s actions were not the proximate cause of injury to ConMed
and Aspen, we affirm the decision of the district court.

   This legal malpractice action stems from an underlying patent case
reported as Megadyne Medical Products, Inc. v. Aspen Laboratories,
Inc., 864 F. Supp. 1099 (D. Utah 1994). Aspen manufactures and sells
medical instruments to the health care industry. In 1991, Aspen, a
subsidiary of ConMed, was sued by Megadyne Medical Products, Inc.
(Megadyne) in the district court in Salt Lake City, Utah for infringe-
ment of Megadyne’s patent on an electrosurgical blade.1 Larson &
Taylor represented Aspen in the Utah patent infringement action.
    1
    Megadyne’s founder procured the patent in 1988. The patent was
recorded as Patent No. 4,785,807 (the ‘807 patent). The instrument pat-
ented is an electrosurgical blade coated in fluorinated hydrocarbon mate-
rial.
    An electrosurgical blade utilizes electricity in the aid of cutting flesh.
              CONMED CORPORATION v. LARSON & TAYLOR                      3
                                    I.

   At the close of Megadyne’s case in chief in the Utah action, Larson
& Taylor moved for a directed verdict pursuant to Fed. R. Civ. P.
50(a) on the issue of patent infringement. However, Larson & Taylor
did not move at that time for a directed verdict on the issue of invalid-
ity of the patent. At the close of all the evidence, Larson & Taylor did
not make or renew any motion for directed verdict. The jury returned
a verdict for Megadyne in the amount of $1.92 per unit, finding that
the ‘807 patent was not invalid, that Aspen’s surgical blade infringed
upon the ‘807 patent, and that the infringement was willful.2

   After the jury’s verdict, Larson & Taylor made a rule 50(b) motion
for judgment notwithstanding the verdict on the issue of the patent’s
invalidity. Specifically, Larson & Taylor argued that the proper con-
struction of the patent claim was an issue for the judge and not for
the jury. The Utah district court denied the motion, stating that
Aspen’s failure to raise the issue of the patent’s validity in any prior
motion for directed verdict made the motion for judgment notwith-
standing the verdict untimely under Fed. R. Civ. P. 50(b). Megadyne
Med. Prods., 864 F. Supp. at 1105.

   Larson & Taylor also moved for a judgment notwithstanding the
verdict on the issue of patent infringement and willful infringement.
However, because they had not renewed the motion for directed ver-
dict at the close of all the evidence, as generally required by Fed. R.
Civ. P. 50(b), the district court denied this motion as well. The district
court held that by failing to renew their motion for directed verdict
at the close of all the evidence, Aspen forfeited its opportunity to so
challenge the factual premise of the adverse jury verdict on a motion
for judgment notwithstanding the verdict. Megadyne Med. Prods.,
864 F. Supp. at 1106.3
  2
     Among relevant issues for the jury were the extent with which the
electrosurgical blade was covered by fluorinated hydrocarbon material,
the type of electrical energy that the blade utilized, and the thickness of
the blade.
   3
     The Utah district court noted the exception in Armstrong v. Federal
National Mortgage Ass’n, 796 F.2d 366 (10th Cir. 1986), as stated in
4             CONMED CORPORATION v. LARSON & TAYLOR
   Aspen appealed to the United States Court of Appeals for the Fed-
eral Circuit. The appeal only concerned the Utah court’s denial of the
motion for judgment notwithstanding the verdict as it pertained to the
infringement issue. Aspen did not challenge the Utah court’s denial
of the judgment notwithstanding the verdict motion with respect to
the invalidity of the ‘807 patent.

   On April 4, 1995, the Federal Circuit entered a judgment affirming
the lower court without opinion pursuant to Fed. Civ. R. 36.4 ConMed
and Aspen filed a petition for rehearing and suggestion for rehearing
en banc that was denied by the Federal Circuit on May 1, 1995. Con-
Med and Aspen paid the judgment of the Utah district court in the
amount of $2,275,866.34 on June 20, 1995 and did not seek certiorari
in the Supreme Court. They stated they would pursue further relief by
way of re-examination by the Patent and Trademark Office.

   In February of 1998, ConMed and Aspen filed this legal malprac-
tice action against Larson & Taylor, alleging that Larson & Taylor
attorneys breached the applicable standard of care during trial in the
Utah action by failing to move properly for a directed verdict and fail-
ing to renew that motion under Fed. R. Civ. P. 50. ConMed and
Aspen further alleged that this error caused direct harm to them
because the Federal Circuit would have reversed the jury’s decision
and decided in their favor but for Larson & Taylor’s failure to make
these motions properly.

    After full discovery, both parties filed cross-motions for summary

Karns v. Emerson Electric Co., 817 F.2d 1454, 1458 (10th Cir. 1987),
which allows consideration of a later motion for judgment notwithstand-
ing the verdict, even after a failure to move for directed verdict at the
close of all the evidence when (1) the defendant moved for a directed
verdict at the close of plaintiff’s evidence, (2) the trial court somehow
indicated that the renewal would not be necessary to be preserved, and
(3) the evidence introduced after the motion was brief. Karns, 817 F.2d
at 1456. The Utah district court found that because Aspen failed the third
element of the Armstrong test, the exception did not apply. Megadyne
Med. Prods., 864 F. Supp. at 1106.
   4
     See p. 10, infra., for text of that rule.
              CONMED CORPORATION v. LARSON & TAYLOR                    5
judgment in the district court. The district court concluded that to pre-
vail on their malpractice claim, ConMed and Aspen were required to
show that the Federal Circuit would have found in their favor if Lar-
son & Taylor had made the appropriate motions.5 After reviewing the
proceedings in the Utah district court action and upon oral argument
by the parties, the district court held that even if the defendants had
made a timely Rule 50 motion at the close of all the evidence, the out-
come of the appeal in the Federal Circuit would not have changed.

   The district court held that sufficient evidence existed to support
the verdict in the Utah district court action and that the Utah jury’s
construction of the patent claim was sustainable in law. Because Con-
Med and Aspen thus failed to establish causation and resulting dam-
ages, the district court granted summary judgment for Larson &
Taylor. ConMed and Aspen appeal the district court’s grant of sum-
mary judgment, and we affirm.

                                   II.

   We review the district court’s grant of summary judgment de novo,
viewing the evidence in the light most favorable to the non-moving
party. See Myers v. Finkle, 950 F.2d 165, 167 (4th Cir. 1991). A mov-
ing party is entitled to summary judgment if there is no genuine issue
as to material fact and the moving party is entitled to judgment as a
matter of law. See Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986).

   To prevail in a legal malpractice action under Virginia law, a plain-
tiff must prove that an attorney-client relationship existed which gave
rise to a duty and the neglect or breach of that duty by the attorney
proximately caused the client’s damage. See Gregory v. Hawkins, 468
S.E.2d 891, 893 (Va. 1996). In order to prevail on the causation ele-
ment, a plaintiff must show that the appellate court would have
reversed and entered judgment in the plaintiff’s favor but for the
attorney’s error. See Goldstein v. Kaestner, 413 S.E.2d 347, 349 (Va.
1992) (holding the appropriate standard of review in a malpractice
action where a timely appeal is not filed).6 Thus, in order for ConMed
  5
    The parties agree on this. ConMed and Aspen brief, p. 19 and 31, Lar-
son and Taylor brief, p. 32.
  6
    The Goldstein court determined the standard of review when an attor-
ney failed to file a timely appeal. We are of opinion the same standard
6             CONMED CORPORATION v. LARSON & TAYLOR
and Aspen to prevail, they must demonstrate that but for Larson &
Taylor’s alleged negligence, the Federal Circuit would have found in
Aspen’s favor.

   Because the nature of this malpractice action requires that we
review the Utah district court’s denial of ConMed and Aspen’s
motion for judgment notwithstanding the verdict assuming the motion
had been properly made and review the denial from the perspective
of the Federal Circuit, we must first determine the standard under
which the Federal Circuit would review the denial of a motion for
judgment notwithstanding the verdict.

   As we have previously held, "the rules governing appellate review
of patent cases are no different than in other types of civil litigation."
Tights, Inc. v. Acme-McCrary Corp., 541 F.2d 1047, 1055 (4th Cir.
1976). Thus, in determining whether the motion for judgment not-
withstanding the verdict should have been granted, we must evaluate
the evidence adduced at trial in the light most favorable to the verdict
winner; the court will not attempt either to weigh the evidence or pass
on credibility; and the court will not substitute its own judgment for
that of the jury. See Brown v. McGraw-Edison Co., 736 F.2d 609,
612-13 (10th Cir. 1984); Richardson v. Suzuki Motor Co., 868 F.2d
1226, 1235 (Fed. Cir. 1989). In the case of patent infringement, a
jury’s verdict must be upheld if it is supported by substantial evi-
dence; that is, "if there is evidence upon which a reasonable jury
could have found infringement." Ultradent Prods., Inc. v. Life-Like
Cosmetics, Inc., 127 F.3d 1065, 1070 (Fed. Cir. 1997) (citations omit-
ted).

   Federal Circuit precedent provides that in order for an appellant to
prevail in such an infringement appeal, as here, the appellant must
show that the jury’s finding is not supported by substantial evidence
or that the jury’s finding was made in relation to claim interpretation
that cannot be sustained in law. See Senmed, Inc. v. Richard-Allen

applies to the facts at issue in this case in which Larson & Taylor alleg-
edly failed to preserve review in the Federal Circuit by failing to renew,
at the end of all the evidence, a motion for directed verdict which was
made at the conclusion of the plaintiff’s evidence.
              CONMED CORPORATION v. LARSON & TAYLOR                    7
                                                  7
Med. Indus., 888 F.2d 815, 817 (Fed. Cir. 1989). ConMed and Aspen
argue that the jury’s finding in the Utah district court was made in
relation to claim interpretation that cannot be sustained in law and
that if Larson & Taylor had properly moved for judgment notwith-
standing the verdict, the Federal Circuit would have properly con-
strued these patent claims and reversed the Utah district court.
(ConMed and Aspen brief at 2) We disagree.

                                   A.

   ConMed and Aspen assert that the district court committed a fun-
damental error by failing to construe the ‘807 patent claims as a mat-
ter of law prior to concluding that substantial evidence supported the
Utah jury’s finding of infringement. ConMed and Aspen further con-
tend that Federal Circuit precedent obligates the court to construe the
patent claims as a matter of law and that the district court’s failure to
do so, consistent with their position, as ConMed and Aspen believe
the Federal Circuit should have, constitutes reversible error. ConMed
and Aspen’s argument is based on their belief that when the ‘807
patent is properly construed, the undisputed evidence shows either
that the ‘807 patent is invalid or that the Aspen blade does not
infringe upon the ‘807 patent.

   In asserting that it is the court’s duty to construe the patent claim
at issue first, ConMed and Aspen rely on the Federal Circuit’s deci-
sion in Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed.
Cir. 1995), affd. 517 U.S. 370 (1996). Indeed, Markman mandates
that "in a case tried to a jury, the court has the power and obligation
to construe as a matter of law the meaning of language used in the
patent claim." Markman, 52 F.3d at 979. However, at the time the
Federal Circuit reviewed the Utah district court’s denial of the motion
for judgment notwithstanding the verdict in this case, the Markman
decision had not been decided. Therefore, in order to determine
whether the Federal Circuit would have reversed the Utah court’s
denial of the motion for judgment notwithstanding the verdict had it
been made properly, we must first address whether it was appropriate
under Federal Circuit law at the time of the appeal for the issue of
  7
   ConMed and Aspen agree to this, brief p. 50; Larson and Taylor do
not disagree, brief p. 44.
8              CONMED CORPORATION v. LARSON & TAYLOR
patent claim construction to be submitted to the jury. If submitting the
issue to the jury was appropriate and substantial evidence exists to
support the jury’s verdict and claim construction, the jury’s verdict
must stand.

   As the Markman decision itself points out, prior to Markman "the
opinions of . . . [the Federal Circuit] contained some inconsistent
statements as to whether and to what extent claim construction is a
legal or factual issue, or a mixed issue." Markman, 52 F.3d at 976.
Although some cases state that claim construction was a matter of law
for the court to decide,8 a number of other cases stated that claim con-
struction may contain underlying issues with relation to facts which
must be submitted to a jury under proper instructions. See, e.g., Tol-
O-Matic, Inc. v. Proma Produkt-Und Mktg., 945 F.2d 1546, 1552
(Fed. Cir. 1991); Palumbo v. Don-Joy Co., 762 F.2d 969, 974 (Fed.
Cir. 1985); McGill Inc. v. John Zink Co., 736 F.2d 666, 671-72 (Fed.
Cir. 1984). Regardless of whether Markman held that these cases
were erroneous in their analysis of the patent claim construction issue,
prior to Markman they were still good law in the Federal Circuit.

   The McGill, Palumbo, and Tol-O-Matic decisions all found that
claim construction could contain factual issues which should be
resolved by the jury. In the present case, a factual dispute with regard
to the patent claim construction is precisely what the district court
found existed.9 Upon reviewing the trial record of the Utah action, the
district court found "substantial material fact issues in dispute with
the claim construction." Thus, under Federal Circuit case law prior to
    8
     See e.g. Read Corp. v. Portec, Inc., 970 F.2d 816, 822-23 (Fed. Cir.
1992); Senmed, Inc. v. Richard-Allan Med. Indus., 888 F.2d 815, 818-20
(Fed. Cir. 1989); Specialty Composites v. Cabot Corp., 845 F.2d 981,
986 (Fed. Cir. 1988) SSIH Equip. S.A. v. United States Int’l Trade
Comm’n, 718 F.2d 365, 376 (Fed. Cir. 1983).
   9
     Specifically, the court found that the jury reviewed several issues per-
tinent to the patent claim construction that were in dispute and subject
to conflicting fact and expert opinion evidence. These issues included
whether fluorinated hydrocarbon material completely covered the Aspen
Blade, whether the Aspen blade conducted electrical energy through
capacitive coupling or ohmic electrical conduction, and what the patent
term "about 3 mils" of thickness encompassed.
              CONMED CORPORATION v. LARSON & TAYLOR                    9
Markman, it was not at all inappropriate for the Utah district court to
submit the issue of patent claim construction to the jury under proper
instructions. Nor was it inappropriate or inconsistent with applicable
law for the Federal Circuit Court of Appeals or the district court in
the case at hand to rely on the jury’s claim construction of the patent
under the instructions of the court and uphold its verdict. As such, we
are of opinion that the district court did not err in failing to construe
the patent claims favorably to ConMed as a matter of law.

                                   B.

   After reviewing the evidence that the jury received, the district
court stated, "this Court cannot find that the jury’s verdict was not
supported by substantial evidence, or that the jury’s finding of the
claim interpretation cannot be sustained in law." As a result, the dis-
trict court decided that even if Larson and Taylor had made a timely
Rule 50 motion, the outcome of the appeal would not have been dif-
ferent. Upon our own review of the record, we agree with the district
court that the jury received and reviewed conflicting evidence with
respect to patent claim construction.

   We also agree that the jury’s claim interpretation is sustainable in
law and that its verdict is supported by substantial evidence. At the
time the appeal was taken, Federal Circuit case law allowed for claim
construction to be left for the jury in cases where infringement of a
patent hinges on the interpretation of the claim. See Tol-O-Matic v.
Proma Produkt-Und Mktg., 945 F.2d 1546, 1552 (Fed. Cir. 1991).
Thus, because the jury’s claim interpretation was sustainable in law
and its verdict is supported by substantial evidence, we are of opinion
that Larson & Taylor’s actions did not cause damage to the ConMed
or Aspen.

                                   C.

   We also note that, with respect to ConMed’s and Aspen’s argument
regarding the validity of the ‘807 patent, Aspen did not appeal the
Utah district court’s denial of judgment notwithstanding the verdict
on the issue of invalidity. As such, the Federal Circuit would not have
considered the invalidity issue. The district court, therefore, in the
10            CONMED CORPORATION v. LARSON & TAYLOR
case at hand, did not have to consider the invalidity issue in its review
of the record from the Federal Circuit’s perspective.

                                  III.

   In this mixed up case of attempting an hypothetical review of the
decisions of a Utah district court and a sister circuit, not even on
direct appeal, but by collateral attack on a judgment which has been
paid by means of a suit for malpractice, the following facts or conclu-
sions or arguments, however the same may be phrased, in our opin-
ion, also tend to support the judgment of the district court in the case
at hand.

  First, the success of the plaintiffs in this case depends to a large
extent on a favorable construction of Federal Circuit Local Rule 36,
which is as follows:

        The court may enter a judgment of affirmance without
     opinion, citing this rule, when it determines that any of the
     following circumstances exist:

       (a) the judgment, decision or order of the trial court
     appealed from is based on findings that are not clearly erro-
     neous;

       (b) the evidence in support of a jury verdict is sufficient;

       (c) summary judgment, directed verdict, or judgment on
     the pleadings is supported by the record;

        (d) the decision of an administrative agency warrants
     affirmance under the standard of review in the statute autho-
     rizing the petition for review; or

        (e) a judgment or decision has been entered without an
     error of law and an opinion would have no precedential
     value.

  It is at once apparent that the judgment of the Federal Circuit might
have been based on part (a) of the Rule, or part (b) of the Rule, or part
              CONMED CORPORATION v. LARSON & TAYLOR                      11
(e) of the Rule, any or all of them. Instead, to arrive at the result
sought to be obtained by ConMed and Aspen, the judgment of the
Federal Circuit must have been based on the failure of Larson and
Taylor to renew the motion for a directed verdict at the close of all
of the evidence, a procedural failure which is not mentioned in Rule
36 but which might have been mentioned in a non-precedential order
or opinion otherwise. See Hamilton v. Brown, 39 F.3d 1574, 1581
(Fed. Cir. 1994). While we do not decide the basis on which the Fed-
eral Circuit based its opinion, the supposition that it was based on the
claimed negligence of the attorneys is not proven by the entry of judg-
ment under its Rule 36.

   The complaint of ConMed and Aspen is that a proper construction
of the claims of the ‘807 patent at issue in this case would have shown
that there was no liability unless on a claim interpretation that cannot
be sustained in law under Senmed, 888 F.2d at 817. But the claims
of the ‘807 patent were before the jury as well as the court. The jury’s
application of the facts of the case to the claims of the patent could
be only under the instructions of the court, whatever the construction
of Markman might be. The Utah district court, having received
requests for instructions, prepared instructions in writing, apparently
67 in number, and took them up one at a time with the attorneys in
some 64 pages of transcript. As the instructions were given to the
jury, there were no objections. Of the 67 instructions, only nos. 18,
19, 24, 29, 30, 32 and 33 are included in the record on appeal in this
case. The claims of patent ‘807 are presumed to be valid under 35
U.S.C. § 282. See also Blonder-Tongue Laboratories, Inc. v. The Uni-
versity of Illinois Foundation, et al., 402 U.S. 313, 335 (1971). The
instructions included in the record on appeal are set out in the margin.10
                                                 (Text continued on page 13)

  10


                        INSTRUCTION NO. 18
  A PATENT IS A PRINTED DOCUMENT WHICH DESCRIBES
THE INVENTION. IT HAS: (1) A SPECIFICATION, WHICH IS A
WRITTEN DESCRIPTION OF THE INVENTION; (2) DRAWINGS
WHICH ILLUSTRATE THE INVENTION; AND (3) NUMBERED
CLAIMS. THE SPECIFICATION MUST CONTAIN A "WRITTEN
DESCRIPTION OF THE INVENTION, AND THE MANNER AND
PROCESS OF USING IT" AND MUST FURTHER SET FORTH THE
12        CONMED CORPORATION v. LARSON & TAYLOR
DETAILS OF THE INVENTION IN "FULL, CLEAR, CONCISE AND
EXACT TERMS AS TO ENABLE ANY PERSON SKILLED IN THE
ART" TO MAKE AND USE THE INVENTION.
  THE SPECIFICATION CONCLUDES WITH "CLAIMS" WHICH
DEFINE IN WRITTEN WORDS WHAT THE PATENT PROTECTS.
THE PATENT CLAIMS ARE THE NUMBERED PARAGRAPHS AT
THE END OF THE PATENT. THE CLAIMS OF THE PATENT
MARK THE BOUNDARIES OF THE INVENTION, LIKE A DEED
OR MAP MARKS THE BOUNDARY OF A PIECE OF PROPERTY.
THE CLAIMS OF THE PATENT GIVE NOTICE TO OTHERS OF
THE INVENTION. THE CLAIMS ARE TO BE READ AND INTER-
PRETED IN LIGHT OF THE SPECIFICATION AND THE PROSECU-
TION HISTORY OF THE PATENT. THIS MEANS THAT YOU ARE
TO DECIDE WHAT A PERSON SKILLED IN THE ART WOULD
UNDERSTAND THE SPECIFICATION TO TEACH AS ITS INVEN-
TIVE CONTRIBUTIONS, WHAT MEANING THAT PERSON
WOULD GIVE TO TERMS AND PHRASES IN THE CLAIMS AND
HOW HE WOULD VIEW THE MEANING OF THE CLAIMS AS A
WHOLE. WHAT THAT HYPOTHETICAL PERSON KNOWS,
UNDERSTANDS OR IS FAMILIAR WITH IN THAT TECHNICAL
AREA IS MEASURED AS OF THE TIME THAT THE INVENTION
WAS MADE.
                  INSTRUCTION NO. 19
  THERE ARE TWO WAYS IN WHICH A PATENT CLAIM MAY
BE INFRINGED. FIRST, A CLAIM MAY BE "LITERALLY"
INFRINGED. SECOND, A CLAIM MAY BE INFRINGED UNDER
WHAT IS CALLED THE "DOCTRINE OF EQUIVALENTS." THE
BOUNDARIES OF THE PATENT RIGHT ARE DEFINED BY THE
CLAIMS OF THE PATENT. EACH CLAIM MUST BE CONSIDERED
SEPARATELY SINCE PROOF OF INFRINGEMENT OF ANY ONE
CLAIM IS SUFFICIENT TO ESTABLISH INFRINGEMENT OF THE
PATENT.
  FOR AN ASPEN PRODUCT TO LITERALLY INFRINGE ANY
ONE OF THE ‘807 PATENT CLAIMS, MEGADYNE MUST PROVE
BY A PREPONDERANCE OF THE EVIDENCE THAT THE EVERY
ELEMENT OF THE SUBJECT MATTER OF THE PATENT CLAIM
IS FOUND IN ASPEN’S PRODUCT.
 ONLY THE CLAIMS OF A PATENT CAN BE INFRINGED. NEI-
             CONMED CORPORATION v. LARSON & TAYLOR                    13
No complaint is made in the brief of ConMed and Aspen about those
instructions. We have examined those instructions and, in all events,
                                              (Text continued on page 15)

THER THE SPECIFICATION NOR THE DRAWINGS CAN BE
INFRINGED.
                      INSTRUCTION NO. 24
  CLEAR AND CONVINCING EVIDENCE IS MORE THAN A PRE-
PONDERANCE OF THE EVIDENCE STANDARD. TO MEET THE
CLEAR AND CONVINCING STANDARD THE EVIDENCE MUST
BE HIGHLY PROBABLE AND FREE FROM SERIOUS DOUBT.
  IN ORDER TO BE CLEAR AND CONVINCING EVIDENCE, THE
EVIDENCE MUST PRODUCE IN YOUR MINDS A DEFINITE AND
FIRM CONVICTION THAT A FACT ALLEGED HAS BEEN ESTAB-
LISHED.
  IN DETERMINING WHETHER ANY FACT IN ISSUE HAS BEEN
PROVED BY CLEAR AND CONVINCING EVIDENCE, YOU MAY
CONSIDER THE TESTIMONY OF ALL THE WITNESSES,
REGARDLESS OF WHO MAY HAVE CALLED THEM, AND ALL
THE EXHIBITS RECEIVED IN EVIDENCE, REGARDLESS OF
WHO MAY HAVE PRODUCED THEM. IF THE PROOF SHOULD
FAIL TO ESTABLISH ANY ESSENTIAL ELEMENTS OF A
PARTY’S CLAIM BY CLEAR AND CONVINCING EVIDENCE,
YOU MUST FIND FOR THE OTHER PARTY AS TO THAT CLAIM.
                 INSTRUCTION NO. 29
  TO DETERMINE THE MEANING OF THE TERMS OF THE
CLAIM, THE SPECIFICATION AND THE FILE (PROSECUTION)
HISTORY OF THE PATENT SHOULD BE CONSIDERED. THE
SPECIFICATION SHOULD ALWAYS BE CONSIDERED IN CON-
NECTION WITH THE TERMS USED IN THE CLAIMS. THE CON-
STRUCTION YOU GIVE TO THE CLAIMS OF THE PATENT IS
NOT LIMITED TO ANY ONE WAY DISCLOSED IN AN EXAMPLE
OR THE SPECIFICATION GENERALLY.
  THE WORDS IN A PATENT ARE TO BE GIVEN THEIR ORDI-
NARY AND CUSTOMARY MEANING UNLESS IT APPEARS
CLEAR THAT THE INVENTOR USED THEM IN SOME DIFFER-
ENT WAY. THE INVENTOR IS PERMITTED TO DEFINE HIS OWN
TERMS IN THE SPECIFICATION. IF THE MEANING OF AN
EXPRESSION IS MADE REASONABLY CLEAR, AND ITS USE
14        CONMED CORPORATION v. LARSON & TAYLOR
WITHIN A PATENT SPECIFICATION IS CONSISTENT, THE
INVENTOR’S DEFINITION GOVERNS THE TERMS OF THE
CLAIMS.
  THE "PROSECUTION HISTORY" OF A PATENT CONSISTS OF
THE ARGUMENTS AND REPRESENTATIONS MADE BY THE
INVENTOR OR HIS LAWYERS IN GETTING THE PATENT
OFFICE’S APPROVAL OF THE PATENT, INCLUDING THE
INVENTOR’S AMENDMENTS TO THE PATENT CLAIMS DURING
THE PROSECUTION PROCESS.
                  INSTRUCTION NO. 30
  CLAIM LANGUAGE SHOULD BE INTERPRETED AS IT
WOULD BE INTERPRETED BY PERSONS SKILLED IN THE ART.
EXPERT TESTIMONY MAY BE CONSIDERED BY YOU TO
DECIDE HOW THE CLAIM LANGUAGE WOULD BE UNDER-
STOOD BY PERSONS SKILLED IN THE ART.
  IF YOU FIND THAT THE INVENTOR DEFINED A WORD OR
TERM IN THE PATENT SPECIFICATION, THEN YOU ALSO
MUST ACCEPT THAT DEFINITION. BUT IF NO PARTICULAR OR
SPECIAL MEANING OF THE WORD OR TERM IS FOUND IN THE
PATENT SPECIFICATION, THEN YOU SHOULD UNDERSTAND
AND GIVE TO THAT WORD OR TERM ITS ORDINARY AND
ACCUSTOMED MEANING.
 ONCE YOU HAVE INTERPRETED A CLAIM IN ONE WAY TO
DETERMINE IF THAT CLAIM HAS BEEN INFRINGED, YOU
MUST INTERPRET THE CLAIM IN EXACTLY THE SAME WAY
TO DETERMINE WHETHER THE CLAIM IS VALID OR INVALID.
                  INSTRUCTION NO. 32
  YOU MAY FIND AN ASPEN PRODUCT INFRINGES ONE OR
MORE OF MEGADYNE’S CLAIMS IF THE PRODUCT TRACKS
THE LANGUAGE OF THE CLAIMS OR YOU MAY FIND
INFRINGEMENT IF MEGADYNE PROVES BY A PREPONDER-
ANCE OF THE EVIDENCE THAT AN ASPEN PRODUCT PER-
FORMS SUBSTANTIALLY THE SAME FUNCTION, IN
SUBSTANTIALLY THE SAME WAY, TO PRODUCE SUBSTAN-
TIALLY THE SAME RESULT AS THE DEVICE IN THE PATENT
CLAIM. THIS IS CALLED "THE DOCTRINE OF EQUIVALENCY"
AND INCLUDES ANY ELEMENT WHICH ONE OF ORDINARY
                 CONMED CORPORATION v. LARSON & TAYLOR                 15
are of opinion they do not relate to a claim interpretation that cannot
be sustained in law under Senmed.

  The other matter coming to the attention of the jury which might
have contained a claim interpretation that cannot be sustained in law
was the form of special verdict, which is also set out in the margin.11
                                               (Text continued on page 17)

SKILL IN THE ART WOULD PERCEIVE AS SUBSTANTIALLY
INTERCHANGEABLE WITH THE CLAIMED ELEMENT.
  WHETHER ASPEN’S PRODUCTS ARE EQUIVALENT TO THE
INVENTION IN ONE OF THE ‘807 PATENT CLAIMS IS A FAC-
TUAL MATTER FOR YOU TO DECIDE BASED ON A PREPON-
DERANCE OF THE EVIDENCE, AND IS TO BE DETERMINED
AFTER YOU CONSIDER THE CLAIMS OF THE PATENT IN VIEW
OF THE WRITTEN DESCRIPTION, THE PRIOR ART, THE PROSE-
CUTION HISTORY AND THE PARTICULAR CIRCUMSTANCES
OF THIS CASE.
                          INSTRUCTION NO. 33
 UNDER THE DOCTRINE OF EQUIVALENTS YOU SHOULD
CONSIDER THE APPLICABILITY OF PROSECUTION HISTORY.
THE HISTORY OF PROSECUTION OF A PATENT APPLICATION
CAN BE USED TO EXPLAIN THE MEANING OF THE WORDS
USED IN THE CLAIMS.
  UNDER THE DOCTRINE OF EQUIVALENTS, A PATENTEE IS
PREVENTED FROM TAKING POSITIONS CONCERNING ITS
CLAIMS THAT ARE INCONSISTENT WITH POSITIONS THAT
THE PATENTEE TOOK IN PRESENTING THE CLAIMS TO THE
PATENT OFFICE IN ITS EFFORTS TO GET A PATENT. THE DOC-
TRINE OF EQUIVALENTS MAY NOT BE USED TO EMBRACE
SUBJECT MATTER ALREADY DISCLOSED BY THE PRIOR ART.
  11

MEGADYNE MEDICAL PRODUCTS,
INC., a Utah corporation,
                                           SPECIAL VERDICT
             Plaintiff,

       vs.
                                           Civil No. 91-C-852 J
16            CONMED CORPORATION v. LARSON & TAYLOR
ASPEN LABORATORIES, INC., a
Colorado corporation, et al.,                Judge Bruce S. Jenkins

          Defendants.

WE, THE JURY, UNANIMOUSLY FIND AS FOLLOWS:
  1. Considering each claim separately, has MegaDyne proven by a
preponderance of the evidence that Aspen has literally infringed claim 1,
2 or 5 of the ‘807 patent?
         Claim 1 Yes     X      No _____
         Claim 2 Yes     X      No _____
         Claim 5 Yes     X      No _____
   2. Considering each claim separately, has MegaDyne proven by a
preponderance of the evidence that an Aspen product performs substan-
tially the same function in substantially the same manner, to produce
substantially the same result as the invention described in claim 1, 2, or
5 of the ‘807 patent?
         Claim 1 Yes     X      No _____
         Claim 2 Yes     X      No _____
         Claim 5 Yes     X      No _____
   If you answered "Yes" to any subpart of question 1 or 2, answer the
next question. If your answer to question 1 or 2 was "No" as to all sub-
parts, do not answer the next question. Instead move ahead to question
4.
  3. Has Megadyne proven by clear and convincing evidence that
Aspen’s infringement of the ‘807 patent was willful?
              Yes    X       No _____
  4. Considering each claim separately, has Aspen proven by clear and
convincing evidence that a single prior art patent, publication or device
contained all of the elements, arranged in exactly the same way as they
are in claim 1, 2 or 5, thereby anticipating the ‘807 patent?
         Claim 1 Yes _____     No     X
         Claim 2 Yes _____     No     X
         Claim 5 Yes _____     No     X
  5. Considering each claim separately, has Aspen proven by clear and
convincing evidence that the differences between the subject matter of
the claimed inventions in claim 1, 2 or 5 of the ‘807 patent and the prior
              CONMED CORPORATION v. LARSON & TAYLOR                     17
It was not objected to. We have examined that verdict and find noth-
ing in it relating to a claim interpretation that cannot be sustained in
law.

art are such that the subject matter as whole would have been obvious
at the time the invention was made to persons having ordinary skill in the
pertinent art?
         Claim 1 Yes _____       No    X
         Claim 2 Yes _____       No    X
         Claim 5 Yes _____       No    X
   6. Considering each claim separately, has Aspen proven by clear and
convincing evidence that claims 1, 2 or 5 of the ‘807 patent fails to par-
ticularly point out or to distinctly claim the subject matter of the inven-
tion?
         Claim 1 Yes _____ No X
         Claim 2 Yes _____ No X
         Claim 5 Yes _____ No X
  7. Has Aspen proven by clear and convincing evidence that the
inventor, Dr. Blanch, failed to disclose the best mode known by the
inventor for carrying out his claimed invention at the time the application
was filed?
              Yes _____     No     X
   8. Has Aspen proven by clear and convincing evidence that Dr.
Blanch, one of Megadyne’s managers, attorneys, or any other persons
participating in preparation or prosecution of the ‘807 patent, with intent
to deceive, failed to disclose any information that he knew was material
to the patent application to the Patent Office.
              Yes _____     No     X
   9. Has Aspen proven by clear and convincing evidence that Dr.
Blanch, one of Megadyne’s managers, attorneys, or any other persons
participating in preparation or prosecution of the ‘807 patent, with intent
to deceive, submitted false or misleading information that he knew was
material to the patent application to the Patent Office.
              Yes _____     No     X
  10. Has Aspen proven by clear and convincing evidence that new
matter was introduced into claims 1, 2 and 5 of the ‘807 patent by an
amendment submitted to the Patent Office in June of 1988?
              Yes _____     No     X
18             CONMED CORPORATION v. LARSON & TAYLOR
   We also add that, whatever the extent of the rule of the Markman
case, we are of opinion that the record in this case does not show a
violation thereof.

                                   IV.

   On cross appeal, Larson and Taylor argue that ConMed’s legal
malpractice claims are barred by the Virginia statute of limitations.
We will not consider this argument because we have affirmed the dis-
trict court’s decision on the grounds stated in the body of this opinion.

     The judgment of the district court is accordingly

                                                            AFFIRMED.

   You need answer the following question ONLY if you answered "Yes"
to either question 1 or 2 and "No" to questions 4 through 10.
  11. What do you find by a preponderance of the evidence to be a rea-
sonable royalty to be charged Aspen per blade produced and sold? (The
parties agree that Aspen has produced and sold 489,038 blades as of Sep-
tember 1, 1993.)
               $    1.92
  DATED THIS 13th day of October, 1993.
                                         /s/       [signature]
                                               Presiding Officer
