United States District Court, D. Delaware
Douglas E. McCann and Joseph B. Warden, FISH & RICHARDSON
P.C., Wilmington, DE Frank E. Scherkenbach, FISH &
RICHARDSON P.C., Boston, MA Howard G. Pollack, Michael R
Headley, and Neil A. Warren, FISH & RICHARDSON P.C.,
Redwood City, CA John W. Thornburgh, FISH & RICHARDSON
P.C., San Diego, CA Attorneys for Plaintiff
G. Day and Andrew C. Mayo, ASHBY & GEDDES, Wilmington, DE
Erik J. Olson, Colette Reiner Mayer, Pieter Sebastian de
Ganon, and Stephen Liu, MORRISON & FOERSTER LLP, Palo
Alto, CA Scott F. Llewellyn, MORRISON & FOERSTER LLP,
Denver, CO Esther Kim Chang and Thomas J. Pardini, MORRISON
& FOERSTER LLP, San Francisco, CA Attorneys for
U.S. District Judge.
before the Court are the parties' post-trial motions. On
November 8, 2018, during a five-day jury trial, Plaintiff
Power Integrations, Inc. ("PI") and Defendants
Fairchild Semiconductor International, Inc., Fairchild
Semiconductor Corporation, and Fairchild (Taiwan) Corporation
(collectively, "Fairchild") each filed Motions for
Judgment as a Matter of Law ("JMOL"). (D.I. 1007,
1010) On January 18, 2019, PI filed a Motion for
Attorneys' Fees, Enhanced Damages, and Pre- and
Post-Judgment Interest (D.I. 1037) while Fairchild filed a
Motion for Judgment as a Matter of Law, or in the
Alternative, a New Trial or Remittitur (D.I. 1036). PI also
filed a Motion to Strike the Declarations of W.H. Huang,
Justin Chiang, and Joel Pond. (D.I. 1057) Briefing on all
motions was completed by March 29, 2019. (D.I. 1038, 1040,
1043, 1044, 1058, 1059, 1061, 1064, 1065) The Court heard
oral argument on April 5, 2019. (D.I. 1068
reasons stated below, the Court will deny as moot the
parties' initial JMOLs, grant in part and deny in part
Pi's post-trial motion, deny Fairchild's post-trial
motion, and deny as moot PI's motion to strike.
recent trial from which the pending motions arise is just one
battle in a long-running war between these
parties. This case ("Fairchild
II”) was filed in May 2008 and is the second in
this District between these parties. In the first case, CA.
No. 04-1371 ("Fairchild I”), Fairchild
was found to have willfully infringed PI's U.S. Patent
Nos. 6, 249, 876 (the '"876 patent") and 6,
107, 851 (the '"851 patent"). In the present
case, the Court initially bifurcated infringement and
validity from willfulness and damages. In April 2012, a jury
found that a new set of Fairchild products directly and
indirectly infringed the '876 and '851 patents. On
appeal, the Federal Circuit remanded for a new trial on
inducement due to errors in the inducement jury instruction.
The November 2018 trial, then, was a new trial on inducement,
as well as the first trial (in this case of Fairchild
II) on willfulness and damages. The jury found that
Fairchild directly and indirectly (by inducement) infringed,
that Fairchild's infringement was willful, and that
reasonable royalty damages were $24, 270, 194.20. (D.I. 1014)
Judgment was entered on the verdict on December 27, 2018.
Judgment as a Matter of Law
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).
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.
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 Charles Alan
Wright, Arthur R. Miller & Edward H. Cooper, 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.").
Rule of Civil Procedure 59(a) provides in pertinent part,
"[t]he court may, on motion, grant a new trial on all or
some of the issues - and to any party - as follows: ... after
a jury trial, for any reason for which a new trial has
heretofore been granted in an action at law in federal
court." New trials are commonly granted 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," where "newly-discovered
evidence exists that would likely alter the outcome of the
trial," where "improper conduct by an attorney or
the court unfairly influenced the verdict," or where the
jury's verdict was "facially inconsistent."
Zarow-Smith v. N.J. Transit Rail Operations, 953
F.Supp. 581, 584-85 (D. N.J. 1997) (internal citations
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 a new trial motion" under "abuse
of discretion" standard). Although the standard for
granting a new trial is less rigorous than the standard for
granting judgment as a matter of law, in that the Court need
not view the evidence in the light most favorable to the
verdict winner, ordinarily 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 the verdict "shocks [the]
conscience." Williamson, 926 F.2d at 1352-53.
damages resulting from patent infringement are found,
"the court may increase the
damages up to three times the amount found or assessed."
35 U.S.C. § 284 (emphasis added). In Halo
Electronics, Inc. v. Pulse Electronics, Inc., 136 S.Ct.
1923, 1932 (2016), the Supreme Court explained that §
284 means "[d]istrict courts enjoy discretion in
deciding whether to award enhanced damages, and in what
amount." See also Id. at 1934 ("Section
284 gives district courts discretion in meting out enhanced
further explains that "enhanced damages are generally
appropriate under § 284 only in
egregious cases.... [Enhanced damages are]
not to be meted out in a
typical patent infringement
case." Id. at 1932 (emphasis added).
Halo continues: "The sort of conduct warranting
enhanced damages has been variously described in our cases as
willful, wanton, malicious, bad-faith, deliberate,
consciously wrongful, flagrant, or - indeed - characteristic
of a pirate." Id. "[N]one of this is to
say that enhanced damages must
follow a finding of egregious misconduct. As with any
exercise of discretion, courts should continue to take into
account the particular circumstances of each case in deciding
whether to award damages, and in what amount."
Id. at 1933 (emphasis added). The party seeking
enhanced damages has the burden of proving by a preponderance
of the evidence that they should be awarded. See Id.
"exceptional" patent cases, a Court may award
"reasonable attorney fees" to the "prevailing
party." 35 U.S.C. § 285. A case is
"exceptional" under § 285 if it is
"simply one that stands out from others with respect to
the substantive strength of a party's litigating position
(considering both the governing law and the facts of the
case) or the unreasonable manner in which the case was
litigated." Octane Fitness, LLC v. ICON Health &
Fitness, Inc., 134 S.Ct. 1749, 1756 (2014). Ultimately,
the Court must make a discretionary decision based on the
totality of circumstances, which may include factors such as
"frivolousness, motivation, objective unreasonableness
(both in the factual and legal components of the case) and
the need in particular circumstances to advance
considerations of compensation and deterrence."
Id. at 1756 & n.6. A party moving for
attorneys' fees must demonstrate, by a preponderance of
the evidence, that a case is "exceptional."
Id. at 1758.
Fairchild's Motion to Set Aside the Inducement Verdict
and for a New Trial on Inducement
seeks judgment as a matter of law that it is not liable for
induced infringement or, alternatively, a new trial on
induced infringement. As explained below, Fairchild has
failed to show that the jury was presented with insufficient
evidence from which to reasonably find liability, that the
jury's verdict was against the clear weight of the
evidence, or that a new trial must be granted to prevent a
miscarriage of justice. Accordingly, the Court will deny
Law of the Case Does Not Preclude the Motion
initial matter, the Court concludes that Fairchild's
motion is not barred by law of the case doctrine. The law of
the case doctrine provides that "when a court decides
upon a rule of law, that decision should continue to govern
the same issues in subsequent stages in the same case."
Christianson v. Colt Indus. Operating Corp., 486
U.S. 800, 816 (1988). The Court previously denied
Fairchild's JMOL after the first trial (see D.I.
731 at 25-26), which the Federal Circuit affirmed, but the
Federal Circuit also remanded for a new trial on induced
infringement due to an erroneous jury instruction. See
Power Integrations, Inc. v. Fairchild Semiconductor
Int'l, Inc., 843 F.3d 1315, 1332, 1335 (Fed. Cir.
2016). Under these circumstances, the Court must consider the
sufficiency of the evidence as it was presented to the second
(properly-instructed) jury, which includes some new evidence
as to the scope of induced infringement (for reasons
including that the second trial, unlike the first, also
addressed damages). (See D.I. 1061 at 4) Further, as
PI concedes (see Tr. at 44), the order denying
summary judgment of no inducement in connection with the
second trial does not preclude the Court from considering a
JMOL on the same issue.
law of the case does not apply, it is nonetheless true (as
will be evident from the discussion below) that the Federal
Circuit's 2016 opinion in this case is highly
instructive, particularly given the ...