ST. JUDE MEDICAL CARDIOLOGY DIVISION, INC., ST. JUDE MEDICAL SYSTEMS AB, and ST. JUDE MEDICAL S.C., INC.,
VOLCANO CORPORATION, Defendant.
Steven J. Fineman, Esq., RICHARDS LAYTON & FINGER, P.A., Wilmington, DE.; John Allcock, Esq., DLA PIPER LLP, San Diego, CA; Drew M. Wintringham, III, Esq., Stuart E. Pollack, Esq., Monica Thompson, Esq., Tamar Duvdevani, Esq., and Nicholas F. Aldrich, Jr., Esq., DLA PIPER LLP, New York, NY. Attorneys for Plaintiffs-Counterclaim Defendants St. Jude Medical, Cardiology Division, Inc., St. Jude Medical Systems AB, and St. Jude Medical S.C., Inc.
Thomas L. Halkowski, Esq., FISH & RICHARDSON, Wilmington, DE; Frank E. Scherkenbach, Esq., FISH & RICHARDSON, Boston, MA; Todd G. Miller, Esq., Michael M. Rosen, Esq., FISH & RICHARDSON, San Diego, CA; Corrin N. Drakulich, Esq., Christina Brown-Marshall, Esq., FISH & RICHARDSON, Redwood City, CA. Attorneys for Defendant-Counterclaim Plaintiff Volcano Corporation.
ANDREWS, U.S. DISTRICT JUDGE
Pending before the Court are the parties' post-trial motions. St. Jude filed the following post-trial motions: (1) Renewed Motion for Judgment as a Matter of Law ("JMOL") for Infringement of U.S. Patent No. 6, 112, 598 ("the '598 Patent") or in the Alternative for a New Trial (D.I. 479); (2) Renewed Motion for JMOL of No Anticipation under 35 U.S.C. § 102 for U.S. Patent Nos. 5, 938, 624 ("the '624 Patent") and 6, 196, 980 ("the '980 Patent") (D.I. 480); (3) Renewed Motion for JMOL of No Obviousness under 35 U.S.C. § 103 for the '624 Patent (D.I. 481); (4) Renewed Motion for JMOL for Infringement of U.S. Patent No. 6, 248, 083 ("the '083 Patent") or in the Alternative for a New Trial (D.I. 482); and (5) Renewed Motion for JMOL of No Obviousness under 35 U.S.C. § 103 for the '980 Patent (D.I. 483). Volcano filed a Motion for JMOL that St. Jude's Aeris and Certus Generation 6 and 7 Products Infringe U.S. Patent No. 6, 976, 965 ("the '965 Patent") (D.I. 473).
St. Jude filed this patent infringement action on July 27, 2010, alleging that Volcano infringes five patents: the '624 Patent, the '980 Patent, the '598 Patent, the '083 Patent and U.S. Patent No. 6, 167, 763 ("the '763 Patent"). (D.I. 1). Volcano filed a counterclaim, alleging that St. Jude infringes four patents, including among them the '965 Patent. (D.I. 8, 12, 39).
Separate trials were held for St. Jude's patent infringement claims against Volcano and Volcano's patent infringement counterclaims against St. Jude. After a five-day trial regarding St. Jude's claims against Volcano,  the jury returned the following verdict. (D.I. 452). For the '598 Patent, the jury found that Volcano's products do not infringe claims 3, 5, or 12. For the '083 Patent, the jury found that Volcano's products do not infringe claims 1, 2, 10, or 14. For the '624 Patent, the jury found in favor of Volcano that claims 1, 2, and 10 are invalid as anticipated and as obvious. For the '980 Patent, the jury found in favor of Volcano that claims 1, 2, and 10 are invalid as anticipated and as obvious.
After a four-day trial regarding Volcano's counterclaims against St. Jude,  the jury returned a verdict. (D.I. 456). Relevant to Volcano's pending motion for JMOL, the jury found that St. Jude's accused products do not infringe claims 1, 4, or 5 of the '965 Patent under the doctrine of equivalents.
The parties completed briefing of post-trial motions on February 28, 2013. This is the Court's decision on those motions.
I. LEGAL STANDARDS
A. Motion for Judgment as a Matter of Law
Judgment as a matter of law is appropriate if "the court finds that a reasonable jury would not have a legally sufficient evidentiary basis to find for [a] party" on an issue. Fed.R.Civ.P. 50(a)(1). "Entry of judgment as a matter of law is a sparingly invoked remedy ... granted only if, viewing the evidence in the light most favorable to the nonmovant and giving it the advantage of every fair and resaonable inference, there is insufficient evidence from which a jury reasonably could find liability." Marra v. Phila. Housing Auth., 497 F.3d 286, 300 (3d Cir. 2007) (internal quotation marks omitted).
To prevail on a renewed motion for judgment as a matter of law following a jury trial, the moving party "must show that the jury's findings, presumed or express, are not supported by substantial evidence or, if they were, that the legal conclusions implied [by] the jury's verdict cannot in law be supported by those findings." Pannu v. Iolab Corp., 155 F.3d 1344, 1348 (Fed. Cir. 1998) (internal quotation marks omitted). "'Substantial' evidence is such relevant evidence from the record taken as a whole as might be acceptable by a reasonable mind as adequate to support the finding under review." Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 893 (Fed. Cir. 1984).
In assessing the sufficiency of the evidence, the court must give the non-moving party, "as [the] verdict winner, the benefit of all logical inferences that could be drawn from the evidence presented, resolve all conflicts in the evidence in his favor, and in general, view the record in the light most favorable to him." Williamson v. Consol. Rail Corp., 926 F.2d 1344, 1348 (3d Cir. 1991); Perkin-Elmer Corp., 732 F.2d at 893. The court may not determine the credibility of the witnesses nor "substitute its choice for that of the jury between conflicting elements of the evidence." Perkin-Elmer Corp., 732 F.2d at 893. Rather, the court must determine whether the evidence supports the jury's verdict. See Dawn Equip. Co. v. Ky. Farms Inc., 140 F.3d 1009, 1014 (Fed. Cir. 1998).; Gomez v. Allegheny Health Servs. Inc., 71 F.3d 1079, 1083 (3d Cir. 1995) (describing standard as "whether there is evidence upon which reasonable jury could properly have found its verdict"); 9B Wright & Miller, Federal Practice & Procedure § 2524 (3d ed. 2008) ("The question is not whether there is literally no evidence supporting the party against whom the motion is directed but whether there is evidence upon which the jury properly could find a verdict for that party.").
Where the moving party bears the burden of proof, the Third Circuit applies a different standard. This standard '"requires the judge to test the body of evidence not for its sufficiency to support a finding, but rather for its overwhelming effect.'" Fireman's Fund Ins. Co. v. Videfreeze Corp., 540 F.2d 1171, 1177 (3d Cir. 1976) (quoting Mihalchak v. Am. Dredging Co., 266 F.2d 875, 877 (3d Cir. 1959)); see also Agere Systems, Inc. v. Atmel Corp., 2005 WL 2994702, at *14 (E.D. Pa. Aug. 17, 2005) (citing Fireman's Fund Ins. Co., 540 F.2d at 1177). The Court '"must be able to say not only that there is sufficient evidence to support a finding, even though other evidence could support as well a contrary finding, but additionally that there is insufficient evidence for permitting any different finding.'" Fireman's Fund Ins. Co., 540 A.2d at 1177 (quoting Michalchak, 266 F.2d at 877).
B. Motion for a New Trial
Federal Rule of Civil Procedure 59(a) provides, in pertinent part:
A new trial may be granted to all or any of the parties and on all or part of the issues in an action in which there has been a trial by jury, for any of the reasons for which new trials have heretofore been granted in actions at law in the courts of the United States.
Among the most common reasons for granting a new trial are: (1) the jury's verdict is against the clear weight of the evidence, and a new trial must be granted to prevent a miscarriage of justice; (2) newly discovered evidence exists that would likely alter the outcome of the trial; (3) improper conduct by an attorney or the court unfairly influenced the verdict; or (4) the jury's verdict was facially inconsistent. See Zarow-Smith v. New Jersey Transit Rail Operations, Inc., 953 F.Supp. 581, 584 (D.N.J. 1997).
The decision to grant or deny a new trial is committed to the sound discretion of the district court. See Allied Chem. Corp. v. Daiflon, Inc., 449 U.S. 33, 36 (1980); Olefins Trading, Inc. v. Han Yang Chem. Corp., 9 F.3d 282, 289 (3d Cir.1993) (reviewing district court's grant or denial of new trial motion under deferential "abuse of discretion" standard). Although the standard for grant of a new trial is less rigorous than the standard for grant of judgment as a matter of law—in that the court need not view the evidence in the light most favorable to the verdict winner—a new trial should only be granted where "a miscarriage of justice would result if the verdict were to stand, " the verdict "cries out to be overturned, " or where the verdict "shocks [the] conscience." Williamson, 926 F.2d at 1352-53.
II. VOLCANO'S POST-TRIAL MOTION
Volcano moves for judgment as a matter of law that St. Jude's accused Certus Generation 6 and 7 and Aeris Generation 6 and 7 guide wire products infringe claims 1, 4 and 5 of the '965 Patent under the doctrine of equivalents. (D.I. 473). Volcano argues that "no reasonable jury could conclude ... that the proximal flexible tube in St. Jude's current wires was not equivalent to the claimed proximal coil in the context of the asserted claims." (D.I. 474 at 4). St Jude argues in response that the jury heard "substantial evidence" to support its contention at trial that a tube and a coil are not equivalent and, therefore, that the jury's verdict should stand. (D.I. 493 at 1).
The '965 Patent discloses and claims a pressure-sensing guidewire. '965 Patent at Abstract. Claim 1 of the ...