United States District Court, D. Delaware
patent infringement action, Plaintiffs Green Mountain Glass
LLC, and CulChrome, LLC (collectively,
"Plaintiffs") allege that Saint-Gobain Containers,
Inc., d/b/a/ Verallia North America, now known as
"Ardagh" ("Defendant") infringes U.S.
Patent Nos. 5, 718, 737 ("the '737 Patent") and
6, 230, 521 ("the '521 Patent"). (D.I.
The court held a five-day jury trial in this matter on April
17 through April 21, 2017. (D.I. 268-272.) At trial,
Defendant properly moved for judgment as a matter of law
("JMOL") at the end of Plaintiffs' case
pursuant to Rule 50(a) of the Federal Rules of Civil
Procedure and again at the close of evidence. Tr. 687:8-17;
April 21, 2017, the jury returned a verdict in favor of
Plaintiffs on the issue of infringement with respect to all
claims of the '737 Patent. Tr. 1374:15-25, 1376:1-25;
(D.I. 240.) The jury found that Defendant willfully infringed
claims 1, 18, 20, 21, 22, and 24 of the '737 Patent, but
that Defendant did not infringe the '521 Patent.
Id. The jury also found that the claims of the
'737 Patent were valid, not obvious, and not anticipated
by the prior art. Id. The court entered judgment on
the verdict on April 26, 2017. (D.I. 242.)
before the court is Defendant's motion for judgment as a
matter of law or alternatively for a new trial on the issues
of infringement and willful infringement and Plaintiffs'
motions for prejudgment interest, attorney's fees,
enhanced damages, and, alternatively, a new trial. (D.I.
248); (D.I. 251.) Having considered the entire record in this
case, the substantial evidence in the record, the
parties' post-trial submissions, and the applicable law,
the court will grant Plaintiffs' motion for prejudgment
interest and deny all other motions. The court's reasoning
BACKGROUND OF THE TECHNOLOGY
patents-in-suit relate to a method of recycling batches of
mixed colored cullet into amber, green, or flint glass by
selectively decolorizing the color green from the mixed
colored cullet and then colorizing the mixed colored cullet.
'737 Patent. The technology described in the
patents-in-suit includes efforts to turn a waste product of
glass recycling of unsorted mixed colored glass cullet into a
product useful to glass manufacturers. Id. At trial,
the main focus of both the parties' invalidity and
infringement arguments focused on the requirement, appearing
in one form or another in each of the asserted claims, that
the colors "of said . . . cullet" are or are not
"selectively colorized." Id. at Claims 1,
STANDARD OF REVIEW
Renewed JMOL Motions
prevail on a renewed motion for judgment as a matter of law
following a jury trial and verdict, 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 conclusion(s) 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) (quoting Perkin-Elmer Corp. v.
Computervision Corp., 732 F.2d 888, 893 (Fed. Cir.
1984)). "Substantial evidence" is defined as
"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., 732 F.2d at 893.
court should only grant the motion "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." Lightning Lube,
Inc. v. Witco Corp., 4 F.3d 1153, 1166 (3d Cir. 1993)
(citing Wittekamp v. Gulf Western Inc., 991 F.2d
1137, 1141 (3d Cir. 1993)). "In determining whether the
evidence is sufficient to sustain liability, the court may
not weigh the evidence, determine the credibility of
witnesses, or substitute its version of the facts for the
jury's version." Lightning Lube, 4 F.3d at
1166 (citing Fineman v. Armstrong World Indus.,
Inc., 980 F.2d 171, 190 (3d Cir. 1992)). Rather, the
court must resolve all conflicts of evidence in favor of the
non-movant. Williamson v. Consol. Rail Corp., 926
F.2d 1344, 1348 (3d Cir. 1991); Perkin-Elmer Corp.,
732 F.2d at 893.
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 could properly
find a verdict for that party." Lightning Lube,
4 F.3d at 1166 (quoting Patzig v. O'Neil, 577
F.2d 841, 846 (3d Cir. 1978)).
to Federal Rule of Civil Procedure 59, a court may grant a
new trial "for any of the reasons for which a new trial
has heretofore been granted in an action at law in federal
court." Fed.R.Civ.P. 59(a)(1)(A). The decision to grant
or deny a new trial is within the sound discretion of the
trial court. See Allied Chem. Corp. v. Daiflon,
Inc., 449 U.S. 33, 36 (1980). In making this
determination, the trial judge should consider the overall
setting of the trial, the character of the evidence, and the
complexity or simplicity of the legal principles which the
jury had to apply to the facts. Lind v. Schenley Indus.,
Inc., 278 F.2d 79, 89 (3d Cir. 1960). Unlike the
standard for determining judgment as a matter of law, the
court need not view the evidence in the light most favorable
to the verdict winner. Allied Chem. Corp., 449 U.S.
at 36. A court should grant a new trial in a jury case,
however, only if "the verdict was against the weight of
the evidence . . . [and] a miscarriage of justice would
result if the verdict were to stand." Consol. Rail
Corp., 926 F.2d at 1352.
Federal Rule of Civil Procedure 60 permits a court to relieve
a party from final judgment and even grant a new trial due to
"fraud . . ., misrepresentation, or other misconduct by
an adverse party." Fed.R.Civ.P. 60(b)(3); see Bethel
v. McAllister Bros., Inc., 81 F.3d 376, 384-85 (3d Cir.
1996). In order to prevail on a Rule 60 motion, the movant
must show that the adverse party engaged in fraud or other
misconduct, and this conduct prevented the movant from fully
and fairly presenting his case. Stridiron v.
Stridiron, 698 F.2d 204, 207 (3d Cir. 1983).
Additionally, the movant must demonstrate that the fraud or
misrepresentation was material to the outcome of the case.
Bandai Am. Inc. v. Bally Midway Mfg. Co., 775 F.2d
70, 73 (3d Cir. 1985). Fraud or misrepresentation must be
proved by clear and convincing evidence. See Brown v.
Pennsylvania R.R. Co., 282 F.2d 522, 527 (3d Cir. 1960).
considered the substantial evidence in the record, the
parties' post-trial submissions, and the applicable law,
the court will deny all of Defendant's motions. The court
will deny Plaintiffs' motions for enhanced damages,
attorney's fees, and a new trial and grant
Plaintiffs' motion for prejudgment interest. The
court's reasoning follows.
Defendant moves for judgment as a matter of law or,
alternatively, a new trial on infringement. (D.I. 249.)
Defendant's sole challenge to the jury's infringement
verdict is that Plaintiffs "failed to prove that it
'selectively decolorized' one of the colors of the
unsorted mixed color cullet, which is a required element of
every asserted claim." (D.I. 249 at 3.) Both of the
asserted independent claims, 1 and 18, require
"selectively" decolorizing and enhancing "at
least one of the colors of said unsorted mixed color glass
cullet." '737 Patent at Claims 1, 18. Thus, to
infringe, Defendant must use colorizers or decolorizers in a
selective way to remove and enhance only a particular color
cullet. (D.I. 249 at 3.) Defendant argues that there is no
evidence in the record that its glassmaking process
selectively uses decolorizers or colorizers to act on the
cullet. Id. at 3-4. Specifically, Defendant argues
that the evidence only shows that it used the same colorizers
and decolorizers that are well-known in the prior art, that
these colorizers and decolorizers acted on all colors in all
materials in the batch as a whole, and were not selective.
Tr. 263:4-264; 265:10-266.
assert that they presented substantial evidence "through
exhibits, fact, and expert testimony, " which provided
the jury reasonable grounds to find that Defendant infringed
all asserted claims of the '737 Patent. (D.I. 260 at
3-4.) The court agrees. Plaintiffs' expert, Dr. Steve
Martin, testified extensively as to Defendant's
infringement finding that "all of the steps [of the
independent claims asserted] have been practiced by
[Defendant's accused methods." (D.I. 260 at 4); Tr.
400:24-433; 424:2-3. While Dr. Martin's testimony alone
provided a sufficient basis for a reasonable jury to find
Defendant infringed the '737 Patent, Plaintiffs submitted
considerable additional evidence. (D.I. 260 at 4.) For
example, Plaintiffs' technical director, Dr. Lehman,
testified that Defendant's Manager of Glass Technology
told him they used mixed color cullet with colorizers
and decolorizers. Tr. 201:1-9. At trial, Plaintiffs
presented testimony from Defendant's corporate head,
James Keener, who testified that "[Defendant] practiced
every limitation of the '737 Patent's independent
claims." Tr. 711:22-712:20. The jury also heard evidence
about an internal email stating that "[Defendant] would
not seek a license on any color control technology because
[they] are already" using the technology. DX-134; (D.I.
260 at 4.) Lastly, the court recognized at trial that
"asserting a defense of anticipation based on
Ardagh's prior public use could seriously undermine the
infringement position in the eyes of the jury." Tr.
762:10-15. Despite this warning, Defendant proceeded with
their defense. Accordingly, a reasonable jury could have
found infringement based on all the aforementioned evidence.
argues, alternatively, that the court should grant a new
trial on infringement because "Plaintiffs' counsel
questioned [Defendant's lay witness Mr. Keener on the
claim elements and concluded with [the question] 'you
have just proven infringement [....] correct?'"
(D.I. 249 at 4); Tr. 711:22-712:22. Despite the court's
admonishment of Plaintiffs' counsel and its curative
instruction, Plaintiffs' counsel repeated this statement
in his closing. Id.; Tr. 713:5-714:9, 1289:18-20.
While counsel behaved inappropriately and unprofessionally at
this and other times during the trial, after much thought the
court believes its curative instructions sufficed to
adequately ameliorate the harm caused by counsel. See
InterDigital Commc 'ns, Inc. v. ZTE Corp., 2016 WL
1073229 at *5 (D. Del. Mar. 18, 2016). At the time the
question was asked, the court told the jury that they were
"to disregard [counsel's] question and his comment.
It was inappropriate. He has been told about it. And he will
not repeat the offense again. But I am directing you to
disregard the comment, please." Tr.
714:2-7. In the final jury instructions the court
reiterated its point and instructed the jury that they
"must completely ignore" all the things during
trial they were ordered to disregard and that they must
"not speculate about" what a witness or exhibit may
have shown because they are not evidence. Tr.
these reasons, the court will deny Defendant's motion for
judgment as a matter of law or, alternatively, for a new
trial on the issue of infringement.
Defendant moves for judgment as a matter of law or,
alternatively, a new trial on willful infringement. (D.I.
249.) Defendant asserts that Plaintiffs failed to prove
willful infringement of the '737 Patent because (1) its
glassmaking process predates the '737 Patent's .
priority date; (2) it did not use unsorted cullet; and (3)
Plaintiffs' actions demonstrate that it did not willfully
infringe the '737 Patent. (D.I. 249 at 5.) Generally, a
finding of willful infringement should be reserved for
"egregious cases of misconduct beyond typical
infringement." Halo Elecs., Inc. v. Pulse Elecs.,
Inc., 136 S.Ct. 1923, 1935 (2016). Willfulness "is
a classical jury question of intent. When trial is had to a
jury, the issue should be decided by the jury."
WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1341 (Fed.
Cir. 2016). A willful infringer is one "who
intentionally infringes another's patents-with no doubts
about its validity or any notion of a defense-for no other
purpose other than to steal the patentee's
business." Halo Elecs., Inc., 126 S.Ct. at
The Priority Date & Mixed Cullet
asserts that because their glassmaking process predated the
'737 Patent's priority date, it reasonably believed
it could not be liable for infringement. (D.I. 249 at 5.)
Defendant further contends that testimony by their former
Senior Vice President for Supply Chain, Mr. Rhea, establishes
that Defendant's glassmaking process had not materially
changed since at least 1986, and the process used
mixed color cullet prior to Plaintiffs' patent.
Id; Tr. 768:1-11, 771:20-773:13. At his deposition,
however, Mr. Rhea also stated that he "can't recall
[to] any degree ever reading [the '737 patent], "
and was not "aware of any analysis that Ardagh did
internally to determine whether or not it was using
technology from CulChrome." (D.I. 260 at 10); (D.I. 252
at 10.) Defendant's Senior Vice President of Technical
Services, Roger Erb, further said he would be
"impress[ed]" if Plaintiffs "could take 50%
Green Glass and 50% Amber Glass and successfully make Amber
Glass" at the time. (D.I. 260 at 8); (JTX-5.)
The Unsorted Cullet
Defendant argues that it believed it was not liable for
patent infringement because it does not and has not used
unsorted cullet. (D.I. 249 at 7.) At trial, the
evidence from both Defendant's witnesses and third
parties established that Defendant used sorted mixed
color cullet before Plaintiffs' patent.
Id. Defendant, however, introduced no
evidence that anyone "act[ed] on the basis of the
defense [of using only sorted cullet] or was even aware of
it." (D.I. 260 at 11); Halo Elecs., Inc., 136
S.Ct. at 1933. Specifically, Defendant's assertion that
it could not be liable because it only used
"sorted" cullet contradicts its prior assertion
that it could not be liable because it had been using
"mixed color cullet" prior to issuance of the
'737 Patent. (D.I. 249 at 5-7.)
Plaintiffs' Actions & Documents
other things, the jury heard evidence on (1) Defendant's
deliberate copying, including that, a mere eight days after
learning about the patent, Defendant drafted a secret dossier
in which it sought information regarding nineteen different
aspects about Plaintiffs' technology; (2) Defendant's
failure to investigate the scope of the patent or form a good
faith belief that it was invalid or not infringed; (3)
Defendant's failure to take remedial action, including
continued post-suit infringement; and (4) Defendant's
attempts to conceal its infringement, including a letter sent
to Plaintiffs denying infringement pre-suit and a letter
post-suit denying it used "mixed color cullet." Tr.
593:11-15. After considering the evidence, the jury, under a
heightened willfulness instruction, found that "Ardagh
was especially worthy of punishment." Tr. at ¶
than presenting conflicting testimony from their own experts,
Defendant has not demonstrated that a reasonable jury could
not have found that it willfully infringed the
patent. It is not the court's role to second guess the
credibility determinations of the jury. See SIBIA
Neuroscis. Inc., v. Cadus Pharms.,225 F.3d 1349, 1355
(Fed. Cir. 2000). For these reasons, the court will deny
Defendant's motion for ...