United States District Court, D. Delaware
ATELIERS DE LA HAUTE-GARONNE (French Corporation) and F2C2 SYSTEMS S.A.S. (French Corporation), Plaintiffs,
BROETJE AUTOMATION-USA INC. (Delaware Corporation) and BRÖ TJE-AUTOMATION GMBH (German Corporation), Defendants
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For Plaintiffs: Melanie K. Sharp, James L. Higgins, and Monte T. Squire, YOUNG CONAWAY STARGATT & TAYLOR, LLP, Wilmington, Delaware; Scott G. Lindvall, Jeffrey H. Horowitz, and Sarah Welbourne Saunders, KAYE SCHOLER LLP, New York, New York; Paul I. Margulies, KAYE SCHOLER LLP, Washington, DC; Michelle Marek, KAYE SCHOLER LLP, Chicago, Illinois.
For Defendants: Todd C. Schiltz and Joseph C. Schoell, DRINKER BIDDLE & REATH LLP, Wilmington, Delaware; Patrick J. Kelleher, Darren S. Cahr, and Carrie A. Beyer, DRINKER BIDDLE & REATH LLP, Chicago, Illinois.
Leonard P. Stark, United States District Judge.
Pending before the Court is Ateliers de la Haute-Garonne and F2C2 Systems S.A.S.'s (collectively, " AHG's" ) Motion for Attorneys' Fees (D.I. 426), Broetje Automation-USA Inc. and Brotje Automation GMBH's (collectively, " Broetje's" ) Combined Renewed Motion for Judgment as a Matter of Law (" JMOL" ), or, in the alternative, for a New Trial, or to Alter and Amend the Judgment (D.I. 434), and AHG's Motion to Alter or Amend the Judgment (D.I. 441).
AHG filed this patent infringement action on May 12, 2009, alleging that Broetje infringes United States Patent Nos. 5,011,339 (" the '339 patent" ) and 5,143,216 (" the '216 patent" ). (D.I. 2; see also D.I. 48) With respect to the '339 patent, AHG asserted infringement of claims 1, 2, and 6, and with respect to the '216 patent, infringement of claims 1 and 2. AHG also accused Broetje of trade dress infringement, unfair competition, and violation of
California law against intentional interference with prospective economic advantage (" IIPEA" ). (D.I. 48 at ¶ ¶ 53-96)
The Court presided over a five-day jury trial in April 2014. ( See D.I. 416) On the patent issues, the jury found that Broetje directly, contributorily, and willfully infringed both the '339 and '216 patents and that it induced infringement as well. The jury determined that the asserted claims in the '339 and '216 patents were valid. The jury further found that Broetje intentionally infringed AHG's trade dress, which -- by the parties' stipulation -- also made Broetje liable for unfair competition. The jury additionally found that Broetje intentionally interfered with AHG's prospective economic advantage in violation of California law. The jury awarded AHG $2,099,943 in compensatory damages for patent infringement, $6,000,000 in compensatory damages for trade dress infringement, unfair competition, and IIEPA, and an additional $6,000,000 of punitive damages for intentional trade dress infringement, intentional unfair competition, and IIEPA, for a total award of $14,099,943. (D.I. 416)
The Court entered judgment on the verdict on April 28, 2014. (D.I. 425) The parties filed post-trial motions and completed briefing on July 11, 2014. ( See D.I. 470) The Court heard argument on the motions on September 15, 2014. ( See D.I. 482)
At the conclusion of the motions hearing, the Court advised the parties it was prepared to share its inclinations on the issues in dispute, but would solicit the parties' views on whether it should do so. ( Id. at 83-86) As the Court explained, what was motivating its proposal to share its inclinations was its sense that this longstanding case (which has already been to the Federal Circuit and back once before) was either going to be litigated for a long time to come or the parties were going to work out a resolution acceptable to both sides. ( See id. ) When the parties were unable to agree even on whether the Court should share its inclinations, the Court decided it would do so nonetheless. (D.I. 484) In an October 22, 2014 letter to counsel, " in hopes that there may yet be an opportunity for the parties to resolve this case without further litigation, and that perhaps I may spare the parties additional effort and expense, I have decided to tell you how I am likely to decide the motions." ( Id. at 1) Specifically, the Court stated that, among other things, it was inclined to deny AHG's motion for attorney fees, deny Broetje's motion for a new trial, and grant in part and deny in part Broetje's motion for judgment as a matter of law. ( Id. at 2)
II. 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," one " granted only if, viewing the evidence in the light most favorable to the nonmovant and giving it the advantage of every fair and
reasonable inference, there is insufficient evidence from which a jury reasonably could find liability." Marra v. Phila. Hous. 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 accepted 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); see also Perkin --Elmer Corp., 732 F.2d at 893. The Court may not assess the credibility of 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 reasonably 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 a 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." ).
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.
New trials are commonly granted in the following situations: (1) where 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) where newly-discovered evidence exists that would likely alter the outcome of the trial; (3) where improper conduct by an attorney or the court unfairly influenced the verdict; or (4) where the jury's verdict was facially inconsistent. See Zarow-Smith v. NJ. Transit Rail Operations, 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, 101 S.Ct. 188, 66 L.Ed.2d 193 (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). However, where the ground for a new trial is that the jury's verdict was against the great weight of the evidence, the Court should proceed cautiously, because such a ruling would necessarily substitute the Court's judgment for
that of the jury. See Klein v. Hollings, 992 F.2d 1285, 1290 (3d Cir. 1993). 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.
A. Patent Infringement and Validity
The jury found that Broetje infringed AHG's '339 and '216 patents and that those patents were not invalid. Broetje moves for judgment as a matter of law that it does not infringe and that the patents-in-suit are invalid. Because substantial evidence supports the jury's findings on both infringement and invalidity, the Court will deny Broetje's motion.
Broetje's arguments for judgment as a matter of law of noninfringement of the '339 and '216 patents are unpersuasive. With respect to the '339 patent, AHG presented evidence, including expert opinion, that Broetje's accused product contains: (1) " at least one longitudinal passageway" " opening into" (D.I. 430 (collectively, with D.I. 429 and 431-43, " Tr." ) at 506-07); (2) " peripheral guiding" (Tr. 501-03); (3) axes in alignment when the product is used (Tr. 495, 503-05); and (4) " withdrawing" the stop member at the end of the tube (Tr. 510). AHG's expert, Dr. Kytomaa, further testified that Broetje's accused cassette includes a " groove arranged ... to open into the hollow center" (Tr. 512) and that Broetje's tube " substantially equals" the area of the rivet head (Tr. 513-15). Based on this and other evidence of record, the jury could reasonably determine that Broetje's cassette infringed the '339 and '216 patents.
Broetje's arguments for judgment as a matter of law of invalidity of the patents-in-suit are also unavailing. The jury reasonably could have found the patents non-obvious, even in light of the Shinjo and Komaki references, based on at least the following evidence of record: (1) Broetje's expert, Mr. Lawrence, testified at trial in a manner contradicting his deposition testimony; (2) Mr. Lawrence failed to provide a reason for modifying Shinjo to rotate the fastening pieces ninety degrees; (3) Mr. Lawrence did not describe where each element of the asserted claims could be found in Shinjo; (4) Dr. Kytomaa rebutted Mr. Lawerence's opinions; and (5) AHG provided substantial evidence of secondary considerations of nonobviousness. (D.I. 459 at 24-26) From all of this, the jury reasonably could have found that Broetje failed to meet its burden to prove invalidity due to obviousness by clear and convincing evidence.
Broetje argues that, given the Court's broad claim construction, Offutt reads on the claims of the patents-in-suit, as the oval shape with grooves/passageways is created when the circular tube of Offutt is bent. (D.I. 435 at 24-25) AHG responds that Broetje did not present a witness who identified how each of the claim elements is disclosed in the prior art. (D.I. 459 at 27) Further, the testimony of inventor Mr. Bornes, on whom Broetje relies regarding bent tubes, was not specific to the Offutt reference. ( Id. ) The jury reasonably could have determined that Broetje failed to prove by clear and convincing evidence that Offutt anticipates the claims.
Broetje further contends that, because the jury heard three different definitions of " peripheral guiding" from two inventors and AHG's expert, the claim term " peripheral guiding" is indefinite. (D.I. 435 at 25).
The jury was not compelled to find this clear and convincing evidence that one of ordinary skill in the art would not know with reasonable certainty the scope of the claims. See Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120, 189 L.Ed.2d 37 (2014). Based on the multiple witnesses with similar testimony (Tr. 501-03, 761-62, 986, 1022-23), a reasonable jury could find that the term " peripheral guiding" is definite. There is substantial evidence to support the jury's finding. ( See also D.I. 415 at 48 (Jury Instr. 6.10) (" If the claims, read in light of the disclosure, reasonably apprise those skilled in the art of the proper scope of the invention, and if the language is as precise as the subject matter permits, then the claims are not indefinite." ))
B. Willful Patent Infringement
Broetje's motion for JMOL of no willful patent infringement will be granted. The Court agrees with Broetje that AHG failed to satisfy the objective prong for willful patent infringement because Broetje relied on reasonable defenses to infringement, including Broetje's proposed claim constructions and invalidity defenses. (D.I. 435 at 27) Accordingly, the Court need not reach the further issue of whether substantial evidence supports the jury's findings that AHG satisfied the subjective prong of the ...