Advanced Display Systems, Inc. v. Kent State University, 212 F.3d 1272 (2000)
`54 U.S.P.Q.2d 1673
`
`" KeyCite Yellow Flag — Negative Treatment
`Distinguished by Miller v. Pilgrim's Pride Corp.,
`16, 2008
`
`W_D_Va.,
`
`January
`
`212 F.3d 1272
`United States Court of Appeals,
`Federal Circuit.
`
`ADVANCED DISPLAY SYSTEMS,
`
`INC., Plaintiff—Appellee,
`and
`
`Bao Gang Wu, Third Party Defendant—Appellee.
`V.
`
`KENT STATE UNIVERSITY and Kent
`
`Research Corporation, Defendants/
`
`Third—Party Plaintiffs—Appellants,
`and
`
`Kent Display Systems, Inc., Defendant/
`
`Third—Party Plaintiff—Appellant.
`
`Nos. 99-1012, 99-1013.
`
`I
`May 18, 2000
`
`Rehearing and Rehearing En
`Banc Denied Aug. 24, 2000.
`
`Company that developed and promoted polymer-free liquid
`crystal displays (LCDS) brought action seeking declaratory
`judgment
`that patent was invalid. Patent assignee and
`licensees brought infringement action against company, and
`cases were consolidated. The United States District Court
`
`for the Northern District of Texas, Jeffrey A. Kaplan, J .,
`entered judgment upon jury's finding that patent was invalid
`for anticipation and obviousness and was not infringed.
`Aftcr dcnial of thcir motion for ncw trial, assigncc and
`licensees appealed. The Court of Appeals, Gajarsa, Circuit
`Judge, held that: (1) Whether and to what extent material has
`been incorporated by reference into an allegedly anticipating
`reference is a question of law;
`(2)
`instruction directing
`jury to dctcrminc whcthcr and to what cxtcnt matcrial was
`incorporated by reference was erroneous and prejudicial; (3)
`newly discovered evidence warranted new trial on issue of
`obviousness; (4) newly discovered evidence warranted new
`trial on issue of infringement; and (5) bad faith conduct of
`company's counscl warranted sanction of ncw trial.
`
`Reversed in part, vacated in part, and remanded.
`
`WESTLAW
`
`Attorneys and Law Firms
`
`*1275 Kevin C. Nash, ofDallas, Texas, argued for plaintiff-
`appellee and third party defendant-appellee. With him on the
`brief was C. Michael Clark, Attorney at Law, of Corinth
`Texas.
`
`Richard J. I-Ioskins, Schiff Hardin & Waite, of Chicago,
`Illinois,
`argued for defendants/third party plaintiffs-
`appellants. With him on the brief were Patricia J. Thompson
`and Julie L. Brown. Of counsel on the brief was Ray L.
`Weber, Renner, Kenner, Grieve, Bobak, Taylor & Weber,
`of Akron, Ohio. Of counscl wcrc V. Jamcs Adduci, H, and
`Michael L. Doane, Adduci, Mastriani & Schaurnberg, L.L.P,
`of Washington, DC.
`
`Before PLAGER, SCHALL, and GAJARSA, Circuit Judges.
`
`DECISION
`
`GAJARSA, Circuit Judge.
`
`This is an appeal from the judgment of the United States
`District Court for the Northern District of Texas, entered
`on a jury verdict, in a consolidated declaratory judgment
`and patent infringement action relating to U.S. Patent No.
`5,453,863 (the “West patent”). Advanced Display Systems,
`Inc. (“ADS”) filed a complaint
`in thc Northern District
`of Texas seeking a declaratory judgment of invalidity
`of the West patent. Kent State University (“KSU” , an
`assignee of the West patent, and licensees Kent Research
`Corporation (“KRC”) and Kent Display Systems,
`Inc.
`(“KDS”) (collcctivcly “Kcnt”) thcn filcd an infringement
`action, and the two cases were consolidated with Kent as the
`nominal defendant and ADS as the nominal plaintiff. The
`parties agreed to have a magistrate judge preside over the
`jury trial. Following the two—week trial, the jury found that
`the West patent was invalid for anticipation and obviousness
`and not infringed by ADS. Kent then moved for a new
`trial on all the issues in light of newly discovered evidence.
`Kent also moved for a new trial on anticipation, alleging an
`erroneous jury instruction. In addition, Kent filed a motion
`for sanctions against ADS's counsel for withholding evidence
`during discovery. The magistrate judge denied all of these
`motions. On appeal, we hold that prejudicial
`legal error
`tainted the jury instruction, we vacate the judgment, and
`remand for a new trial on anticipation. We also remand for
`a new trial on obviousness and infringement in light of the
`
`1
`
`USAA 1021
`
`

`
`Advanced Display Systems, Inc. v. Kent State University, 212 F.3d 1272 (2000)
`54 U.S.P.Q.2d 1673
`
`newly discovered evidence. Finally, we reverse the magistrate
`judge's ruling on the motion for sanctions.
`
`BACKGROUND
`
`Since 1965, scientists at KSU's Liquid Crystal Institute
`(“LCI”) have been researching the Various properties and
`applications of liquid crystal materials. An important area
`of research focused on liquid crystal displays (“LCDS”).
`A typical LCD consists of a sandwich of liquid crystal
`
`material between two glass substrates. An electrical driver]
`connects to the sandwich in order to stimulate or address the
`
`liquid crystal material, thereby creating readable numerical
`or alphabetical characters. Manufacturers of electro-optic
`products, *1276 such as digital watches and notebook
`computers
`screens, use LCDs
`to display images and
`information.
`
`Traditionally, LCDs were constructed by combining varying
`concentrations of liquid crystal materials and polymers.
`For example, one method for creating LCDS involved
`evaporating water from an aqueous emulsion of liquid
`crystal material
`i11 a solution of water-soluble polymer.
`Another method involved phase separation of liquid crystal
`from a homogenous solution with a synthetic resin to
`generate a liquid crystal phase blended with a polymer
`phase. Those methods, however, were expensive and entailed
`complex manufacturing processes. In addition, the presence
`of polymers created a haze effect that obstructed visibility of
`the displayed information when the LCDs were viewed from
`oblique angles.
`
`In early 1992, Dr. John West (“West”), director ofLCI, began
`experimenting with techniques for developing polymer—free
`LCDs. West eventually developed a new, polymer—free
`
`LCD using cholestric visible materials.2 West determined
`that applying an electric field pulse of sufficient duration
`and voltage to cholestric visible material creates a contrast
`between the material's light reflecting and light scattering
`textures,
`thereby enabling a stable image display. West
`further found that a stable image could be sustained through
`a single electric field pulse rather than continuous application
`of an electric field. Thus, through the unique use of cholestric
`visible materials, West achieved the advantages of prior
`LCDs without the drawbacks attendant to the use ofpolymers.
`
`On May 4, 1993, West and his colleague, Dr. Deng—Ke Yang,
`filed a patent application covering their polymer—free device
`
`WESTLAW
`
`and a method for stimulating it. On September 26, 1995, the
`application matured into the West patent. West then assigned
`the patent to KSU, which through its licensing arm KRC,
`subsequently licensed the patent to KDS.
`
`In February 1992, Dr. Bao Gang Wu (“Wu”), a former KSU
`student and colleague of West, formed ADS. In June 1993,
`Jiamini Gao (“Gao”), ADS‘s vice—president of research and
`development, secured a written formula for Kent's cholestric
`LCD. Even with knowledge of that formula, however, ADS
`failed to develop a functional LCD device because it could
`not construct an effective electrical driver.
`
`then president
`In early 1994, Dr. Zvi Yaniv (“Yaniv”),
`of KDS and a former classmate of Wu, visited ADS
`and demonstrated a prototype of Kent's cholestric LCD
`and its electrical driver. Following the demonstration,
`Yaniv went to lunch with Wu,
`leaving the prototype at
`ADS‘s offices. Seizing the opportunity, Gao clandestinely
`removed the prototype from its box and brought it into
`an ADS laboratory. Gao then instructed a group of ADS
`engineers, including Victor Zhou (“Zhou”), to disassemble
`the prototype, photograph its various components, and re-
`assemble it in such a manner as to avoid any indication of
`tampering. Throughout this process, Gao urged his employees
`to work quickly to avoid detection because he knew the
`implication of the theft.
`
`Prior to YaniV’s visit, ADS failed to develop an operational,
`polymer—free LCD through its independent efforts. Equipped
`with the photographs of Kent's prototype, however, ADS
`replicated Kent's cholestric LCD and electrical driver within
`a month. On April 11, 1994, ADS also filed a patent
`application for a polymer—free LCD based on the equivalent
`subject matter that had been photographed and copied
`during the surreptitious disassembly of Kent's prototype.
`The patent listed Wu, Gao, Zhou, and Ya(rDong Ma as
`inventors. *l277 While ADS‘s application was pending, the
`West patent issued, and the Patent and Trademark Office
`Examiner rejected ADS‘s claims directed exclusively to
`polymer—free LCDs as anticipated by the West patent. ADS
`consequently amended and limited its claims to cover the
`application of surface treatment in polymer—free LCDS. The
`ADS application eventually matured into U.S. Pate11t No.
`5,625,477 on April 29, 1997.
`
`learned that ADS was promoting
`In early I996, Kent
`a polymer—free LCD and notified ADS that
`it
`intended
`to enforce the West patent. While Kent and ADS were
`
`2
`
`

`
`Advanced Display Systems, Inc. v. Kent State University, 212 F.3d 1272 (2000)
`54 U.S.P.Q.2d‘1673
`
`discussing licensing arrangements, ADS filed a complaint in
`the Northern District of Texas seeking a declaratory judgment
`of invalidity of the West patent. After settlement negotiations
`failed, Kent sued ADS for infringement of the West patent,
`and the cases were consolidated in the Northern District of
`Texas.
`
`Concurrent with discovery in the present case, ADS filed
`suit in Texas state court against USA Display, a company
`with several former ADS employees, alleging trade secret
`misappropriation. ADS's attorneys in the USA Display suit
`and in the present case were from the same law firm. During
`discovery in the USA Display suit, Zhou’s deposition was
`taken. The pertinent parts of the deposition are set forth
`below.
`
`Q: Can you describe for me or explain to me what Exhibit
`3 is?
`
`A: This is a picture taken by an employee in ADS. I cannot
`remember who took it, but I know Dr. Zvi Yaniv [and Kent]
`also develop a similar display, they call [theirs] bistable
`display, but in ADS they call multistable display. But ADS
`did not know how to design the driver for this device. So
`one day Dr. Zvi Yaniv visited ADS with a sample, and
`[Kent] have [a] completed driver.... And Dr. Zvi Yaniv
`gave to Jianmi Gao, who is the vice president of ADS and
`boss of R & D group, so he opened Dr. Zvi Yaniv[‘s]
`sample, and took this picture, while at that time Dr. Zvi
`Yaniv was not there. So [Yaniv] did not know.
`
`Q: What is this picture of?
`
`A: This picture is the picture for the sample brought by Zvi
`
`Q: And [Yaniv] gave [the sample to ADS]?
`
`A: [H]e not gave a sample, he just waited at ADS with a
`sample and—
`
`Q: [T]hen he left?
`
`A: No, he did not [leave], he showed the sample. But during
`[t]his time period he left and [Gao] opened the box and took
`the picture.
`
`WESTLAW
`
`Q: You were there?
`
`A: Yeah, I was there.
`
`Q: Did you open up the driver?
`
`A: Yes. I was an employee there. I did whatever my boss
`told me to do.
`
`Q: Where was Mr. Zvi Yaniv [at that time]?
`
`A: Well, we are taking picture and I don't know who he
`was talking to, but he was somewhere within the building
`or maybe left for lunch.... I just know that [Gao] wa11t us to
`take the picture, and we took it.
`
`Q: Prior to the meeting in which the Kent State product was
`taken apart and photographed at ADS was ADS working
`on a similar type of display?
`
`A: Yeah. They were trying to develop the similar thing.
`
`that ADS was trying to but had 11ot
`Q: You said
`succeeded in making a driver for [their LCD];
`is that
`correct?
`
`A: Yes that's correct.
`
`*1278 Q: Would you please describe the difficulties?
`
`A: Yeah, we did not know how to drive the new display
`since the driving is another difficult part for design[ing] the
`whole display. We did not know how to drive it, what kind
`of waveform.... We did not know that.
`
`Q: [Was] exhibit 3 [helpful]?
`
`A: Right. Exhibit 3. This is very big help. So since then we
`knew, we start to know how to design the driver.
`
`Q: [B]efore the photograph was made. How was [Gao]
`involved in trying to make the driver?
`
`3
`
`

`
`Advanced Display Systems, Inc. v. Kent State University, 212 F.3d 1272 (2000)
`54 U.S.P.Q.2d‘1673
`
`A: We tried [for] a long time—we tried to understand how
`to drive it, but were not successful.
`
`A: Yeah.
`
`Q: You were?
`
`Q: Did [Gao know?]
`
`A: He had some idea but all not successful.
`
`Q: None of his ideas were?
`
`A: No. We didn't even-
`
`A: After he gave me [the Kent State formulation].
`
`Q: How long did it
`formulation?
`
`take you after he gave you the
`
`A: Few days.
`
`Q: [During] the time period before the Kent State product
`was taken apart and photographed in the ADS lab.... [Was]
`ADS
`trying to make a driver?
`
`Q: All right. Now after you used the Kent State formulation
`to make the [LCD], your next problem was the driver?
`
`A: Yeah.
`
`A: Right.
`
`Q: And failed. Could not do it.
`
`A: No. They did not have an idea at that time.
`
`Q: VVhy did ADS need a driver for [its LCD]?
`
`A: Without the driving circuit, no one [is] interested in that
`[LCD]. That is just a piece of glass. You have to make the
`
`Q: And on the day that Zvi Yaniv vi sited ADS and brought
`the [Kent prototype] module to show everybody, that the
`photographs were made, did Zvi Yaniv know the module
`was being photographed?
`
`A: [Gao]
`
`told us to be quick. Don't let Dr. Zvi Yaniv
`
`Q: So after the photographs were made, what happened to
`the [Kent prototype]? Was it reassembled?
`
`A: Reassembled a11d tl1e[11] gave [it back to Yaniv].
`
`Q: Do you know when Mr. Gao brought you the formula
`for the Kent State cholestric material?
`
`Q: How long did it take to photograph it?
`
`A: Before June.
`
`Q: Before June of what?
`
`A: June '93.
`
`A: Pretty quick.
`
`Q: [Gao] told you to be quick. didn't he?
`
`A: Yeah. pretty quick.
`
`Q: Before Mr. Gao gave you the formulation, had ADS
`succeeded in making any [LCD] cholestric materials?
`
`A: I did not see it.
`
`Q: After he gave you what he told you to be the Kent State
`formula, were you successful in making cholestric [LCD]
`material?
`
`*1279 Q: After the Kent State [prototype] was copied,
`were you successful in making a driver?
`
`A: Yes. After about a month or so.
`
`Q: How did your driver compare to the Kent State driver?
`
`A: We changed the microprocessor but we used the driver.
`The driver is the key part, the most important to this,
`
`WESTLAW
`
`4
`
`

`
`Advanced Display Systems, Inc. v. Kent State University, 212 F.3d 1272 (2000)
`54 U.S.P.Q.2d‘1673
`
`Q: The cholestric material that was developed at ADS Was
`based upon the formulas from Kent State‘?
`
`A: Yes.
`
`Q: [N]one of [the drivers] was built before ADS got this
`photograph?
`
`Q: And the driver on the [LCD] at ADS was based upon
`the driver from Kent State?
`
`A: Right.
`
`A: Yeah, at that time, yes.
`
`Q: So the entire system that makes this was still to be done?
`
`Q: You didn't know whether Kent State or ADS owned the
`technology, did you?
`
`Q: And was anybody working on designing this system?
`
`A: [W]e did not know how to design.... We don't know.
`
`A: Right.
`
`A: l know—tecln1ically l know the basic[s] are the same.
`
`Q: The basic[s] of the Kent State—
`
`A: The chemistry mixture and the Way they make the cell
`are the same.
`
`Q: As Kent State and ADS?
`
`Q: [Dr. Wu] told you to change things around so that he
`could get out—aWay from an earlier patent?
`
`A: He tried to find us a new way to build another kind of
`[polymer-free LCD] so we can avoid a conflict with Kent
`State, yes.
`
`Q: Why didn't [ADS] just buy the functioning [driver]
`
`?
`
`A: [l]t is not market available, I think. We cannot buy it.
`
`Q: Why didn't you find a new way?
`
`A: It is very hard.... We did not have the time, we did not
`have the money to test everything.
`
`Q: ls it true that there are hundreds of shelf drivers‘?
`
`A: Thousands a11d thousands.
`
`Q: And so theoretically you could begin today to test a11d
`test drivers for years and not, other than by accident, hit the
`right driver?
`
`A: By luck you may get it in a second. If not luck, it takes
`l0 years, it takes your life.
`
`Q: So in order to find one that [properly charged the LCD],
`you either do random experimentation to find a shelf driver
`or invent or create a new driver?’
`
`A: Yeah.
`
`Q: Or use somebody else's driver?
`
`WESTLAW
`
`During this testimony, ADS’s attorney attempted to terminate
`the deposition and telephoned the presiding judge to request
`a protective order. The judge denied ADS's request but
`suggested that both parties keep the deposition confidential
`until ADS filed a formal motion for a protective order. ADS,
`however, never filed the motion and eventually abandoned
`the suit. ADS’s attorney also instnicted the court reporter not
`to prepare a transcript of the deposition.
`
`During discovery in the present case, ADS failed to
`disclose to Kent the events that took place during Yaniv's
`lunch with Wu in spite of various demands made upon
`*1280
`ADS.
`In particular, Kent served upon ADS a
`document request for “[a]ll documents that refer or relate to
`any evaluation, analysis, examination, testing, performance,
`or investigation of any light-modulating reflective device
`comprising [cholestric material] or any compound thereof
`made by KDS, the [LC1], or any third party.” ADS’s attorneys,
`
`5
`
`

`
`Advanced Display Systems, Inc. v. Kent State University, 212 F.3d 1272 (2000)
`54 U.S.P.Q.2d‘1673
`
`however, failed to notify Kent about Zhou‘s identity or the
`deposition in the USA Display suit. ADS's attorneys also
`failed to produce the photograph of Kent's prototype, instead
`characterizing it as “A ttomey Work Product” in the privilege
`
`log. 3
`
`At the end of discovery, all pre—trial issues regarding claim
`construction, validity, and infringement were submitted to a
`Special Master, who construed the claims and recommended
`a denial of ADS's motion for summary judgment on the issue
`of anticipation. The magistrate judge then adopted the Special
`Master's report, and this case proceeded to a jury trial.
`
`At trial, both parties presented evidence and expert testimony
`concerning anticipation, obviousness, and infringement. On
`the issue of anticipation, in particular, ADS argued that the
`West patent was anticipated by US PatentNo. 4,097,l 27 (the
`“Haas patent”) and the documents incorporated by reference
`therein. The documents incorporated into the Haas pate11t
`disclosed hundreds of different liquid crystal materials that
`could reflect visible and infrared light. From that body of
`materials, ADS contended, with perfect hindsight, that the
`combination of the Haas patent and three particular liquid
`crystal materials taught every element of the West patent.
`
`Into the first week of trial, Kent was advised by Mr. Kan
`Xu, a former ADS employee and president of USA Display,
`that Zhou possessed information relevant to the case. Then,
`more than one week into trial and without an opportunity to
`probe Zhou’s knowledge, Kent called Zhou to testify about
`how ADS disassembled Kent's prototype and photographed
`it. The photograph was also finally provided to Kent and
`admitted into evidence. At this stage, however, Kent still did
`not possess a copy of Zhou’s deposition transcript from the
`USA Display suit.
`
`At the close of evidence, Kent's attorney did not make a
`motion for Judgment as a Matter of Law ("Jl\/IOL”) on
`either the validity or infringement issues. On the issue of
`anticipation, the magistrate judge instructed the jury that their
`role was to determine whether and to what extent material
`
`from other documents was incorporated by reference into the
`Haas pate11t. Kent's attorney objected to this instruction, but
`the magistrate judge overruled the objection and included the
`instruction in his final charge to the jury. The magistrate judge
`also provided the following definition of incorporation by
`reference:
`
`WESTLAW
`
`[T]he purpose of incorporation by
`reference is to make one document
`
`become part of another document by
`referring to the form in the latter
`in such a manner that it is apparent
`that the cited document is part of the
`referencing document as if it were
`fully set out therein.
`
`After initial deliberations, the jury was unable to resolve
`the issues of anticipation and obviousness. The magistrate
`judge, however, instructed the jurors to continue deliberating
`until
`they reached a verdict. Two hours later,
`the jury
`determined that the West patent was invalid for anticipation
`and obviousness and not infringed.
`
`Following the jury verdict. Kent's attorney again failed to
`make a motion for JMOL. Rather, having finally received
`Zhou’s deposition transcript, Kent filed a motion for a new
`trial based on (1) newly discovered evidence in view of the
`deposition, and (2) ADS's withholding of relevant evidence
`during discovery. KDS also filed a motion seeking the
`imposition of sanctions *1281 against ADS and its attorneys
`for improper conduct during discovery. Regarding Kent's
`motion for a new trial, the magistrate judge found that Zhou’s
`deposition was merely cumulative of his testimony at trial.
`The magistrate judge also determined that Kent was not
`prejudiced by the late disclosure of the photograph and the
`evidence relating to ADS's disassembly of Kent's prototype,
`because Kent was able to present that evidence to the jury. As
`for sanctions, the magistrate judge denied KDS’s motion but
`remarked that he was “deeply concerned” with the conduct of
`ADS's attorneys and indicated that he would consider further
`disciplinary action.
`
`ANTICIPATION
`
`[2] Anticipation is a question of fact, see In re Graves,
`[1]
`69 F.3d 1147, 1151, 36 USPQ2d 1697, 1700 (Fed.Cir.1995),
`that this court reviews for substantial evidence on appeal
`from a jury trial, see Baxter Inl’l, Inc. v. McGaw, Inc., 149
`F.3d 1321, 1332, 47 USPQ2d 1225, 1233 (Fed.Cir.1998).
`However, a party's failure to make a motion for JMOL, see
`Fed.R.Civ.P. 50(b), at any phase of the litigation precludes an
`appellate court from reviewing the sufficiency of the evidence
`underlying the jury verdict. See Biodex Corp. v. Loredan
`Biomedical Inc, 946 F.2d 850, 862, 20 USPQ2d 1252, 1261
`
`6
`
`

`
`Advanced Display Systems, Inc. v. Kent State University, 212 F.3d 1272 (2000)
`54 U.S.P.Q.2d‘1673
`
`(Fed.Cir.1991) (holding that failure to make a post-verdict
`JMOL forecloses appellate review of the jury's factfinding);
`Jurgens v. McKasy, 927 F.2d 1552, 1557, 18 USPQ2d 1031,
`1035 (Fed.Cir.1991) (requiring a party to make a motion
`for directed verdict in order to challenge the sufficiency of
`the evidence on appeal); see also 9A Charles Ala11 Wright
`& Arthur R. Miller, Federal Practice & Procedure § 2536
`(2d ed.l994) (explaining that the rationale for the rule is
`that a party's failure to make a motion for JMOL works
`as a concession that sufficient evidence exists for a jury
`to reach a verdict). 1n the present case, because Kent did
`not make a motion for JMOL at the close of evidence or
`
`following the jury verdict, we will not disturb the jury's
`factual determinations.
`
`[4] Notwithstanding the absence ofa motion for JMOL,
`[3]
`a party may still challenge a jury verdict by establishing
`that the judge committed legal error or abused his discretion.
`See Biodex, 946 F.2d at 854, 20 USPQ2d at 1255 (stating
`that jury verdict may be altered if the instructions “were
`incorrect or incomplete as given”); Jurgens, 927 F.2d at
`1557-58, 18 USPQ2d at 1036 (providing that, despite the
`absence ofa JMOL motion, party could challenge judgment
`based on jury instructions). On appeal, Kent contends that
`the magistrate judge committed legal error by instructing
`the jury to determine what material was incorporated by
`
`reference into the Haas patent for purposes of anticipation. 4
`A party seeking to alter a judgment based on erroneous jury
`instructions must establish that (1) it made a proper and
`timely objection to the jury instructions, (2) those instructions
`were legally erroneous, see Biodex, 946 F.2d at 853-54, 20
`USPQ2d at 1254-55, (3) the errors had prejudicial effect, see
`Jamesbury Corp. v. Litton Indus. Prod, Inc., 756 F.2d 1556,
`1558, 225 USPQ 253, 255 (Fed.Cir. 1985), and (4) it requested
`alternative instructions that would have remedied the error.
`
`See Delta-X Corp. v. Baker Hughes Prod Tools, Inc, 984
`F.2d 410, 415, 25 USPQ2d 1447, 1450-51 (Fed.Cir.l993).
`
`Pursuant to Rule 51 of the Federal Rules of Civil
`
`[6]
`[51
`Procedure, a party must object to jury instructions “before
`the jury retires to consider its verdict, stating distinctly the
`matter objected to and the *1282 grounds for objection.”
`Fed.R.Civ.P. 51. Because objection to a jury instruction
`involves a procedural matter that is not intimately related
`to this court's exclusive jurisdiction, we look to the regional
`circuit law to ascertain the requirements necessary to comply
`with the rule. See Lummus Indus, Inc. v. D.M. & E., Corp.,
`862 F.2d 267, 270, 8 USPQ2d 1983, 1985 (Fed.Cir.1988)
`(applying Fourth Circuit law to determine whether a party
`
`timely objected to a jury instruction). According to Fifth
`Circuit law, a party satisfies Rule 51 by objecting to an
`instruction prior to the jury's deliberation and stating the
`reason for its objection. See A.B. Baumstimler v. Rankin, 677
`F.2d 1061, 1069, 215 USPQ 575, 581-82 (5th Cir.1982).
`Here, Kent objected before the magistrate judge charged the
`jury and explained that the instruction was erroneous because
`the jury should not decide what material was incorporated
`by reference. Kent's objection therefore complied with Fifth
`Circuit law.
`
`[7] Whether a jury instruction is legally erroneous is a
`question of law. See Brooktree Corp. v. Advanced Micro
`Devices, Inc, 977 F.2d 1555, 1570, 24 USPQ2d 1401, 1411
`(Fed.Cir,1992). VVhen reviewing an instruction for legal error,
`this court reads the instructions as a whole and considers them
`
`in light of the entire charge to the jury. See United States
`Surgical Corp. v. Ethicon, Inc, 103 F.3d 1554, 1564, 41
`USPQ2d 1225, 1232 (Fed.Cir.1997) (“Jury instructions are
`reviewed for correctness, with due attention to their clarity,
`objectivity, and adequacy, taken as a whole”); Biodex, 946
`F.2d at 854, 20 USPQ2d at 1255 (noting that this court
`reviews jury instructions in their entirety). Here, the relevant
`inquiry is whether the magistrate judge committed legal error
`in his jury instruction on anticipation.
`
`[9]
`[31
`Section 102(b) provides that “a person shall
`be entitled to a patent unless the invention was patented
`or described in a printed publication
`more than one
`year prior
`to the date of the application.” 35 U.S.C.
`§ 102(b)
`(1994). Accordingly,
`invalidity by anticipation
`requires that the four corners of a single, prior art document
`describe every element of the claimed invention, either
`expressly or inherently, such that a person of ordinary
`skill i11 the art could practice the invention without undue
`experimentation. See Atlas Powder Co. v. Ireco Inc, 190
`F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed.Cir.1999);
`In re Paulsen, 30 F.3d 1475, 1479, 31 USPQ2d 1671,
`1673 (Fed.Cir.1994). Material not explicitly contained in
`the single, prior art document may still be considered for
`purposes of anticipation if that material
`is incorporated
`by reference into the document. See Ultradent Prods.,
`Inc. v. Life-Like Cosmetics, Inc, 127 F.3d 1065, 1069,
`44 USPQ2d 1336, 1339-40 (Fed.Cir.1997) (holding that
`material incorporated by reference into a document may be
`considered in an anticipation determination). Incorporation
`by reference provides a method for integrating material from
`various documents into a host document—a patent or printed
`publication in an anticipation determination—by citing such
`
`WESTLAW
`
`7
`
`

`
`Advanced Display Systems, Inc. v. Kent State University, 212 F.3d 1272 (2000)
`54 U.S.P.Q.2d 1673
`
`material in a manner that makes clear that the material is
`
`effectively part of the host document as if it were explicitly
`contained therein. See General Elec. Co. v. Brenner, 407 F.2d
`
`1258, 1261-62, 159 USPQ 335, 337 (D.C.Cir.l968); In re
`Lund, 54 C.C.P.A. 1361, 376 F.2d 982, 989, 153 USPQ 625,
`631 (CCPA 1967). To incorporate material by reference, the
`host document must identify with detailed particularity what
`specific material it incorporates and clearly indicate where
`that material is found in the various documents. See In re
`
`Seversky, 474 F.2d 671, 674, 177 USPQ 144, 146 (CCPA
`1973) (providing that incorporation by reference requires a
`statement “clearly identifying the subject matter which is
`incorporated and where it is to be found”); In re Saunders, 58
`C.C.P.A. 1316, 444 F.2d 599, 602-03, 170 USPQ 213, 216-
`17 (CCPA 1971) (reasoning that a rejection for anticipation
`is appropriate only if one reference “expressly incorporates a
`particular part” of another reference); National Latex *1283
`Prods. Co. 12. Sun Rubber Co., 274 F.2d 224, 230, 123 USPQ
`279, 283 (6th Cir.l959) (requiring a specific reference to
`material in an earlier application in order have that material
`considered part of a later application); cf Lund, 376 F.2d
`at 989, 153 USPQ at 631 (holding that a one sentence
`reference to an abandoned application is not sufficient to
`incorporate material from the abandoned application into a
`new application).
`
`Whether and to what extent material has been
`
`[11]
`[10]
`incorporated by reference into a host document is a question
`of law. See Quaker City Gear Works, Inc. 1/. Ski! Corp, 747
`F.2d 1446, 1453-54, 223 USPQ 1161, 1166 (Fed.Cir.1984)
`(reasoning that whether a document
`is incorporated by
`reference into a patent presents a question of law when
`determining enablement). As the court observed in General
`Electric, the doctrine of incorporation by reference has its
`roots in the law of wills a11d contracts. 407 F .2d at 1260,
`
`159 USPQ at 337. In those areas of jurisprudence, whether
`material is incorporated by reference presents a question of
`law. See 11 Richard A. Lord, Will/fston on Contracts § 30:25
`(4th ed.l999) (observing that terms of a contract may be
`expressed in separate documents and the determination of
`which terms are incorporated into the contract is a question
`of law); George Taylor Bogert, The Law of Trusts and
`Trustees, § 105 (2d ed. rev.l984) (describing the use of
`incorporation by reference to supply additional terms to a
`will and providing cases holding that whether terms are
`incorporated into a will is a question of law); see also Topro
`Servs., Inc. v. McCarthy W Constr., Inc, 827 F.Supp. 666,
`667 (D.Col0. l 993) (“Whether the Prime Contract, or any part
`of it, was incorporated by reference i11to the Subcontract is
`
`a question of law.”); Siler v. Dorsett, 108 N.C. 300, 302,
`12 S.E. 986, 987 (N.C.l891) (holding that court decides
`whether a will incorporated material from other documents).
`Logic therefore requires that incorporation by reference in
`the field of patent law is also a question of law. Further, the
`standard of one reasonably skilled ill the art should be used to
`determine whether the host document describes the material
`
`to be incorporated by reference with sufficient particularity.
`
`Moreover, no necessary contradiction exists given that
`incorporation by reference is a question of law while
`anticipation is a question of fact. Anticipation, put simply,
`requires that every element of the claimed invention was
`previously “described in a single reference.” Scripps Clinic
`& Research Found. v. Genentech, Inc., 927 F.2d 1565, 1576
`(Fed.Cir.199l) (emphasis added). Thus, if incorporation by
`reference comes into play in an anticipation determination,
`the court's role is to determine what material in addition
`
`to the host document constitutes the single reference. The
`factf1nder’s role, in turn, is to determine whether that single
`reference describes the claimed invention.
`
`Turning now to the present case, ADS argued at trial
`[12]
`that the West patent was anticipated by the Haas patent and
`the material incorporated therein from other documents. The
`magistrate judge charged the jury with the task of determining
`what material was incorporated by reference. As explained
`above, it was the duty of the magistrate judge to determine, as
`a matter of law, whether and what material was incorporated
`by reference into the Haas patent. Thus, we conclude that
`instructing the jury to make that determination constituted
`legal error.
`
`that error was prejudicial.
`We next consider whether
`Prejudicial legal error exists when it “appears to the court
`[that
`the error is]
`inconsistent with substantial justice.”
`Fed.R.Civ.P. 61.
`In the present case, determining what
`material was incorporated by reference into the Haas patent
`was a critical question of law for the magistrate judge to
`resolve before submitting the factual issue of anticipation
`to the jury. Indeed, during trial, ADS never contended
`that
`the material explicitly set forth in the Haas patent
`alone would anticipate the *1284 West patent. Rather,
`ADS‘s anticipation argnlment