United States District Court, D. Delaware
MEMORANDUM AND ORDER
F. Bataillon, Senior United States District Judge.
matter is before the Court on defendant Minerva Surgical
Inc.'s (“Minerva”) renewed motion for
judgment as a matter of law of no patent damages or, in the
alternative, for a new trial for reasonable royalty (D.I.
521); Minerva's motion for a new trial for Lanham Act and
breach of contract claims (D.I. 523); Minerva's motion
for an injunction under the Delaware Deceptive Trade
Practices Act, 6 Del. C. § 2532 (D.I. 525); plaintiffs
Hologic, Inc.'s and CYTYC Surgical Products, LLC's
(collectively, “Hologic”) motion for attorney
fees and related nontaxable costs (D.I. 528); Hologic's
motion for enhanced damages (D.I. 530); Hologic's motion
for a permanent injunction (D.I. 532); and Hologic's
motion for an accounting, supplemental damages, ongoing
royalties, pre-judgment interest, and post-judgment interest
patent infringement action, Hologic alleged that Minerva
infringed its patents involving a system and method to detect
uterine perforations during uterine ablation. Hologic alleged
that Minerva infringed U.S. Patent No. 6, 872, 183
(“the '183 Patent”), titled “System and
Method for Detecting Perforations in a Body Cavity, ”
filed May 24, 2004, and issued March 29, 2005, and U.S.
Patent No. 9, 095, 348 (“the '348 Patent”),
titled “Moisture Transport System for Contact
Electrocoagulation, ” filed August 8, 2013, and issued
August 4, 2015 (collectively “the
Patents-in-Suit”). The '183 patent involves method
claims and the asserted claim of the '348 patent is a
system or apparatus claim.
to trial, the Court addressed cross-motions for summary
judgment on invalidity and infringement and Hologic's
motion for summary judgment on the issue of assignor
estoppel. Minerva asserted the patent claims at issue were
invalid for lack of written description and enablement. The
Court found Minerva's invalidity defenses were barred by
assignor estoppel. The Court also stated that even if Minerva
was not estopped from asserting the defense, its arguments
lacked merit in that Minerva's Section 112 arguments
rested on a flawed definition of the claims that ignored the
Court's claim constructions, and Hologic had shown that
the '183 and '348 patent disclosures adequately
described the claims as construed by the Court (D.I. 407, at
25-26). The Court further found as a matter of law that,
under the Court's claim construction, Hologic had shown
that Minerva's accused product infringed the asserted
claims of the patents. Id. at 26.
action proceeded to trial on the patent issues of damages and
willfulness and on Minerva's counterclaims for false
advertising and breach of contract. Those matters were tried
to a jury from July 16, 2018, to July 27, 2018. The jury
found Hologic was entitled to damages for lost profits in the
amount of $4, 200, 529.75, and for royalties not included in
lost profits in the amount of $587, 138.48. The jury further
found that Hologic's infringement was not willful.
Hologic prevailed on Minerva's counterclaims-the jury
rejected Minerva's counterclaims for breach of contract
and false advertising under the Lanham Act violations (D.I.
498). The Court entered judgment on the verdict, subject to
revision pursuant to any rulings on post-trial motions, on
August 13, 2018 (D.I. 520).
pending motions, Hologic argues that this case warrants
enhanced damages and asks the Court to amend the judgment by
doubling Hologic's damages award of $3, 752, 550. Hologic
contends Minerva's failure to abide by the Court's
claim construction justifies enhancement and argues that
Minerva should have known that its proposed claim
constructions were baseless, knew that owning its own patents
was no defense to infringement of Hologic's patents, knew
that the presence of additional features on its device was
not a defense to infringement, and should have known that it
had no invalidity defense. Hologic also points to other
allegedly egregious conduct by Minerva such as its failure to
take remedial action, infringement after entry of judgment,
its copying of the NovaSure system, and its attempts to
conceal its infringement of the '348 patent by adding
false statements to its operator's manual. Hologic
further argues that Minerva's size and financial
condition also weigh in favor of enhancement of damages.
argues in response that a finding of willfulness is a
prerequisite to awarding enhanced damages under Section 284.
Further, it argues that even if the Court were to consider
enhancement, the evidence would not support imposition of
enhanced damages under 35 U.S.C. § 284.
also moves for an award of supplemental damages from the date
of the last sales records produced (April 1, 2018) to the
date of judgment based on an effective royalty rate of 16.1%.
It seeks an accounting and an ongoing royalty for
post-judgment infringing sales at the rate of 20% plus a 10%
enhancement. It also seeks prejudgment interest calculated at
the prime rate compounded quarterly from the dates of
infringement through the date of judgment ($270, 533) and
post-judgment interest at the legal rate under 28 U.S.C.
opposes the motion for supplemental damages and argues
Hologic's calculation is not supported by any evidence.
Though it concedes that Hologic is entitled to recover
prejudgment interest, it urges the Court to apply the
treasury bill rate. It does not challenge Hologic's right
to postjudgment interest at the legal rate.
also renews its motion for JMOL, it contends the Court should
award no damages to Hologic, contending that none were proven
at trial. It contends the award of lost profits was improper
and is not supported by evidence. It also argues Hologic
failed to prove its reasonable royalty damages because the
jury was not instructed to apportion the damages to reflect
the infringing features of the product. Alternatively, it
moves for a new trial on reasonable royalty.
also moves for a new trial on its Lanham Act and breach of
contract claims. It argues that Hologic violated Federal Rule
of Civil Procedure 26(e) and withheld highly relevant
evidence relating to Minerva's counterclaims. It also
contends the Court erred in striking and precluding testimony
on the quantum of Minerva's harm resulting from false
advertising and an intertwined breach of a Non-disclosure
Agreement. Further, it contends the Court erred in dismissing
Minerva's state-law counterclaim that Hologic falsely
advertised the efficacy rates for its product. It argues that
the Court's rulings made it impossible for Minerva to
fully present its case on its complicated claims involving
Hologic's continuous scheme to attack Minerva as a
competitor with misleading efficacy rates for products and
“Scorched Earth” campaign to prevent competition.
also seeks a permanent injunction under the
DTPA. It seeks an order enjoining Hologic from
engaging in conduct that disparages Minerva's Endometrial
Ablation System (“Minerva's EAS”) through
their false and misleading representations about
Minerva's characteristics and safety. Specifically, it
moves for (1) an injunction prohibiting Hologic from
disparaging the safety of Minerva's EAS, including
prohibiting the use of the 20-year old liver videos that have
nothing to do with Minerva's technology, and (2) a
corrective disclosure to the market explaining Hologic's
false and misleading use of the videos.
response, Hologic argues that because all of Minerva's
counterclaims were rejected by the jury or the Court, there
is no basis for granting Minerva any equitable relief. It
contends that, although the Court reserved ruling on an
equitable remedy, that issue became moot when the jury
returned a verdict in favor of Hologic on Minerva's
Lanham Act claim.
threshold matter, the Court of Appeals for the Federal
Circuit has now affirmed the finding by the United States
Patent and Trademark Office, Patent Trial and Appeal Board
(“PTAB”) on inter partes review
(“IPR”) that claims 1-15 of the '183 are
invalid as obvious. (D.I. 614-1, Ex. A, Federal Circuit
Opinion) The claims challenged in the IPR include all claims
of the '183 patent Hologic asserted at trial. Minerva
argues that Hologic no longer has any cause of action based
on the '183 patent, and any pending litigation with
respect to that patent is moot. Hologic argues that the
matters are not moot unless and until the Patent Office
cancels the patent.
Court finds the Federal Circuit's determination does not
affect the jury verdict in this case. The jury was asked to
assess damages for infringement of the asserted claims of
both the '183 patent and the '348 patent, without
separately apportioning damages between the asserted claims
of the two patents. The jury's damages determination can
be adequately supported by the finding of infringement of
Claim 1 of the '348 patent. The infringement of the
'348 patent apparatus claim and the '183 patent
method claims were interrelated, but a finding that the
method claims are not valid does not affect the finding of
infringement as to the apparatus claim. In other words, one
can infringe the apparatus claim even if the method claims
motion for a permanent injunction against Minerva's
continued infringement of the '183 patent, however, will
be rendered moot by the Federal Circuit decision. Similarly,
Hologic's motions for supplemental and/or enhanced
damages and ongoing royalties for infringement of the
'183 patent will be moot. Any supplemental or enhanced
damages for infringement of the '348 patent can be
awarded only up the date of expiration of the '348
patent. The Federal Circuit's findings as to
the '183 patent (method claims) do not affect the
Court's findings of assignor estoppel on the asserted
claim of the '348 patent.
Court held oral argument on the present motions on February
26, 2019. The Court has considered the record in this case,
the substantial evidence in the record, the parties'
post-trial submissions, and the applicable law, and finds as
Standard of Review
of the regional circuit-here the Third Circuit-governs the
standards for deciding motions for JMOL under Fed.R.Civ.P.
50(b) and new trial under Fed.R.Civ.P. 59(a). See
WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1325 (Fed.
Cir. 2016); Leader Techs., Inc. v. Facebook, Inc.,
678 F.3d 1300, 1305 (Fed. Cir. 2012). Under Rule 50(b), in
ruling on a renewed motion, “the court may: (1) allow
judgment on the verdict, if the jury returned a verdict; (2)
order a new trial; or (3) direct the entry of judgment as a
matter of law.” Fed.R.Civ.P. 50(b). A judgment as a
matter of law is appropriate when “the verdict is not
supported by legally sufficient evidence.”
Lightning Lube, Inc. v. Witco Corp., 4 F.3d 1153,
1166 (3d Cir. 1993). In the Third Circuit, a “court may
grant a judgment as a matter of law contrary to the verdict
only if ‘the record is critically deficient of the
minimum quantum of evidence' to sustain the
verdict.” Acumed LLC v. Advanced Surgical
Servs., Inc., 561 F.3d 199, 211 (3d Cir. 2009) (quoting
Gomez v. Allegheny Health Servs., Inc., 71 F.3d
1079, 1083 (3d Cir.1995)).
considering that issue the court ‘may not weigh the
evidence, determine the credibility of witnesses, or
substitute its version of the facts for the jury's
version.'” Id. (quoting Lightning
Lube, Inc. v. Witco Corp., 4 F.3d 1153, 1166 (3d
Cir.1993)). “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
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) (citation omitted). A renewed post-verdict JMOL
motion under Federal Rule of Civil Procedure Rule 50(b)
“may not be made on grounds not included in the earlier
[Rule 50(a)] motion.” Duro-Last, Inc. v. Custom
Seal, Inc., 321 F.3d 1098, 1105 (Fed. Cir. 2003).
Rule of Civil Procedure 59(e) expressly recognizes a
court's authority to alter or amend its judgments.
Fed.R.Civ.P. 59(e). “Consistently with this original
understanding, the federal courts generally have invoked Rule
59(e) only to support reconsideration of matters properly
encompassed in a decision on the merits[, ]” and legal
issues collateral to the main cause of action. White v.
New Hampshire Dep't of Emp't Sec., 455 U.S. 445,
451 (1982). The principal limitation on that discretion is
that a motion to amend “may not be granted where to do
so would undermine the jury's fact-finding role and
trample on the defendant's Seventh Amendment right to a
jury trial.” Robinson v. Watts Detective Agency,
Inc., 685 F.2d 729, 742 (1st Cir. 1982). Specifically,
Rule 59(e) has been invoked to correct damage awards that
were improperly calculated, and to include prejudgment
interest to which a party was entitled. See Lubecki v.
Omega Logging, Inc., 674 F.Supp. 501 (W.D. Pa.
1987), aff'd, 865 F.2d 251 (3d Cir. 1988); 11
Wright and Miller, Federal Practice and Procedure, §
2817 n. 28-29.
rule governing motions to alter or amend judgment is the
proper basis for bringing a request for prejudgment interest.
J.A. McDonald, Inc. v. Waste Sys. Int'l Moretown
Landfill, Inc., 247 F.Supp.2d 542, 546 (D. Vt. 2002).
The method used to calculate amount of judgment and
prejudgment interest involves matters of law and is based on
undisputed facts, and therefore is appropriately resolved by
way of a motion to amend judgment. ...