TT'S MOTION FOR JUDGEMENT AS A MATTER OF LAW CONCERNING PHE AND INFRINGEMENT UNDER THE DOE AND FOR A NEW TRIAL

SHARON JOHNSON COLEMAN, District Judge.

I. INTRODUCTION

On March 13, 2015 this Court entered an Order (Dkt. 1175) finding that "prosecution history estoppel applies to bar the doctrine of equivalents." This ruling was made even though there was no proper motion for judgment as a matter of law on this issue pending before the Court. Indeed, the order (Dkt. 1175) stemmed from the parties jury instruction conference, and specifically from TT's bench memo relating to the jury instructions for prosecution history estoppel ("PHE") (Dkt. 1144) and CQG's response to that bench memo (Dkt. 1167). TT did not have any opportunity, let alone a full and fair opportunity, to respond to an argument to strike from the case one of its three infringement grounds. Indeed, at the jury instruction conference, counsel did not even perceive that the issue of judgment as a matter of law was being argued and had no way of fully understanding CQG's position based on a few paragraphs in a bench memo filed shortly before that conference.

TT believes that this Court's decision was based entirely on the eSpeedlitigation and the doctrine of collateral estoppel, and that this Court did not address the underlying merits of whether prosecution history estoppel ("PHE") actually bars TT from asserting the doctrine of equivalents ("DOE") in this case. As such, TT was barred from arguing that: (1) there is no rebuttable presumption of prosecution history estoppel ("PHE") because the accused CQG products are outside the scope of the subject matter surrender by the amendments during prosecution of the patents-in-suit and (2) the Festo exceptions rebut any presumption of PHE.

Because the issue of collateral estoppel is purely a legal issue, and because there is no requirement that TT file either a Rule 50(b) or a Rule 59 motion to preserve the issue for appeal, TT will not repeat here all of the arguments it made previously in its motion for reconsideration (Dkt. 1176), that was denied by this Court. Attached hereto is Dkt. 1176 for the Court's convenience, which sets forth TT's arguments relating to collateral estoppel, which are incorporated by reference into the present motion. As TT explained in Dkt. 1176, collateral estoppel does not apply because the first three requirements for collateral estoppel are not met. First, the issues in this case (i.e., whether there is a rebuttable presumption of PHE with respect CQG's DOMTrader product and, if so, whether the rebuttable presumption is overcome by any Festo exception with respect to CQG's DOMTrader product) are not the same as the issue addressed in eSpeed (i.e., whether PHE barred TT from asserting the DOE against eSpeed's eSpeedometer product—a totally different product then DOMTrader). In addition, the issue of Festo exceptions was never considered in eSpeed for any product, let alone the accused products here. Second, the issues here were never litigated in eSpeed. Third, certain statements by Judge Moran in eSpeed (and relied upon by CQG) were not essential to the final judgment in eSpeed. Moreover, the Federal Circuit's ruling affirming Judge Moran made clear that the reasoning for finding PHE with respect to the eSpeedometer product does not apply to the facts here.

To the extent that this Court's March 13, 2015 order did actually address and consider the merits of any Festo exceptions and actually based its ruling on the lack of any such exceptions (and TT does not believe that this Court did), then TT respectfully requests that this Court grant TT's motion for a finding under Rule 50(b) that there is no PHE. The reason for this is simple. Even if there was a rebuttable presumption of PHE (and there is not as explained below), two of the Festo exceptions apply which would overcome any such presumption.1 In particular, at trial, TT's expert provided unrebutted testimony that the Price Hold feature in DOMTrader would have been viewed as both unforeseeable and tangential to the purpose of the amendments by one of ordinary skill at the time of the amendments. Because these Festo exceptions apply, there can be no PHE.

Once PHE is removed, this Court should also grant TT's motion for a finding under Rule 50(b) that the accused DOMTrader product infringes under the DOE because, as set forth below, no reasonable jury could reach any other conclusion based on the evidence put forth at trial. At the very least, the Court should grant TT's alternative motion for a new trial under Rule 59 to permit the jury to consider infringement under the DOE (along with the associated damages resulting that infringement and willfulness).

II. LEGAL STANDARDS

A. Rule 50 And Rule 59

Judgment as a matter of law is appropriate under Rule 50(b) of the Federal Rules of Civil Procedure if, in light of the entire record, no reasonable jury could find to the contrary. McMillan v. Stoll, No. 09 C 1622, 2012 WL 707117 at *1 (N.D. Ill. Mar. 5, 2012)2 (quoting Schandelmeier v. Bartels v. Chicago Park Dist., 634 F.3d 372, 376 (7th Cir. 2011)).

Rule 59 permits a court to order a new trial "after a jury trial, for any reason for which a new trial has heretofore been granted in an action at law in federal court." Fed.R.Civ.P. 59(a)(1). In deciding whether to grant a new trial, district courts determine "whether the verdict was against the manifest weight of the evidence, the damages are excessive, or if for other reasons the trial was not fair to the moving party." Fujitsu Ltd. v. Tellabs Operations, Inc., 08 C 3379, 2013 WL 268607, at *4 (N.D. Ill. Jan. 24, 2013) (quoting Frizzell v. Szabo, 647 F.3d 698, 702 (7th Cir. 2011)); see Snaps v. Provident Life & Accident Ins. Co., 244 F.3d 876, 885 (11th Cir.2001) (noting that a new trial may be ordered "when the interests of substantial justice are at stake").

Among other reasons, a court may grant a new trial because "a material issue was improperly . . . withdrawn from a jury." DeWitt v. New York State Hous. Fin. Agency, 97 CIV. 4651 SAS, 1999 WL 672560, at *1 (S.D.N.Y. Aug. 26, 1999) (noting that "[i]n evaluating a Rule 59 motion, the trial judge's duty is essentially to see that there is no miscarriage of justice" (internal quotations omitted)).

B. The Law On Prosecution History Estoppel ("PHE")

The ultimate question of whether an accused product infringes under the doctrine of equivalents is one of fact for the jury to decide. Crown Packaging Technology, Inc. v. Rexam Beverage Can Co., 559 F.3d 1308, 1312 (Fed. Cir. 2009); Interactive Pictures Corp. v. Infinite Pictures, Inc., 274 F.3d 1371, 1376 (Fed. Cir. 2001) ("[determination of infringement by equivalents is an issue of fact, which after a jury trial we review for substantial evidence" (citations omitted)). However, before this ultimate question is reached, the court determines whether the patentee can "avail itself of the doctrine of equivalents" by determining whether PHE bars infringement under the doctrine of equivalents. Id. (citing Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 39 n.8 (1997) (reasoning that whether a patent's prosecution history estops the patentee from arguing an equivalent is an issue of law)).

For there to be a rebuttable presumption of PHE, three factors must be established: (1) an amendment to the claims that further limits the claim; (2) the amendment must have been for purposes of patentability; and (3) the accused product at issue must be within the scope of the surrender resulting from the amendment.3 Pacific Coast Marine Windshields Ltd. v. Malibu Boats. LLC, 739 F.3d 694, 702 (Fed. Cir. 2014); see also Intervet Inc, 617 F.3d at 1291 (stating the need for the court to conduct a comparison of the accused product with the claims as construed to determine whether the accused product falls within the scope of the subject matter surrendered). If all three of these factors are not present, then there is no PHE. If all three factors are present, then there is a rebuttable presumption of PHE. See Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 740-41 (2002). When a rebuttable presumption exists, the patentee can bring forth evidence of one of the so-called "Festo exceptions" to rebut the presumption. Id. Like the application of PHE, the applicability of the Festo exceptions depends on analysis of the functionality of the accused products. See Smithkline Beecham Corp. v. ExcelPharm., Inc., 356 F.3d 1357, 1362-64 (Fed. Cir. 2004); Festo, 344 F.3d at 1369.

Whether the patentee has rebutted the presumption that PHE applies is a question of law determined on a case-by-case basis. Amgenlnc. v. HoechstMarion Roussel, Inc., 457 F.3d 1293, 1312 (Fed. Cir. 2006), cert, denied, 127 S.Ct. 2270 (U.S. 2007) ("[w]hether a patent-holder has successfully rebutted the Festo presumption of the surrender of equivalents is a question of law"); Honeywell Intern. Inc., 370 F.3d at 1143 (noting that "whether there was a presumption of estoppel is best dealt with on a case-by-case basis") (quotations omitted); Ranbaxy Pharm. Inc., 350 F.3d at 1240 (same). Although the question of whether the patentee has successfully rebutted the presumption of PHE is indeed a question of law, this question naturally involves underlying issues of fact, "which may properly be decided by the court." Biagro Western Sales, Inc. v. Grow More, Inc., 423 F.3d 1296, 1301-02 (Fed. Cir. 2005) (recognizing that "[rjebuttal of the presumption may be subject to underlying factual issues") {citing Festo Corp., 344 F.3d at 1368n. 3); see also Duramed Pharma., Inc. v. Paddock Labs., Inc., 2011 WL 2905561, *3 (Fed. Cir. 2011) (concluding that the Festo exception of "[f]oreseeability is a question of law based on underlying issues of fact").

III. IF THIS COURT WENT BEYOND COLLATERAL ESTOPPEL AND ACTUALLY BASED ITS RULING ON THE MERITS OF THE FESTO EXCEPTIONS, THEN TT MOVES UNDER RULE 50(b) THAT THERE IS NO PHE AND THAT CQG INFRINGES UNDER THE DOE

As set forth above, TT believes that this Court's ruling that PFIE applies to bar the DOE was based solely on collateral estoppel. Indeed, this Court stated: "[t]his Court finds that collateral estoppel bars TT from relitigating this issue [PHE] and from asserting that CQG's price column, which moves in response to some, but not all, changes in the inside market infringes under the doctrine of equivalents." Dkt. 1175, p. 2. TT also believes that this Court never addressed the underlying merits of PHE including whether any of the Festo exceptions presented by TT at trial were sufficient to rebut any possible presumption of PHE. Although the March 13, 2015 Order states that "TT presented only conclusory statements that the "evidence" supported TT's ability to rebut the presumption that the narrowing amendment disclaimed a price axis that moves in response to a change in the inside market," TT believes that this Court was merely referring to arguments made by TT's counsel at the hearing, and not the underlying evidence that was presented at trial. Id.

Assuming this Court's ruling was based solely on collateral estoppel, then there is no need for this Court to consider the rest of this brief, and TT will take the issue of collateral estoppel up on appeal. If, on the other hand, this Court's March 13, 2015 Order did actually address and consider the merits of the Festo exceptions and actually based its ruling on a lack of any such exceptions, then TT moves under Rule 50(b) that there is no PHE.

In particular, even if there was a rebuttable presumption of PHE (and there is not as shown in Section rV below), two of the Festo exceptions apply which would overcome any such presumption. The actual evidence that came in during the trial clearly shows that TT has established the applicability of the unforseeability and tangential Festo exceptions to overcome the rebuttable presumption.

For example, TT's expert, Mr. Thomas, testified that in the conventional screens like the one shown in Figure 2 of the patents-in-suit, every time the inside market changed, the prices in the grid change, and it is the real value of those prices that are changing. See e.g., Ex. A, Trial Tr. (Thomas) 658:4-19. He explained further that in the DOMTrader with Price Hold, on the other hand, the label associated with the price may move, but the real price (which is associated with where the mouse was hovering) does not change. Id. As such, he concluded that the Price Hold is a "gimmick" and explained what he meant by that by giving an example of somebody switching the labels on a keyboard. Id. With that background, he went on to explain why one of ordinary skill in the art would have viewed the accused functionality, the DOMTrader with Price Hold, as unforeseeable at that time of the amendments. Id. at 679:17-681:6. For example, Mr. Thomas explained that in mission critical applications such as the trading screens covered by the claims, it would have been "unthinkable" to have "Price Hold" functionality in which the real price value associated with a cursor for order entry is different than the displayed price label. Id. For example, the idea of changing the label on a button in a mission critical application (e.g., a button in the cockpit of an airplane) would make no sense and would not be foreseeable.

Mr. Thomas also testified as to why one of ordinary skill in the art would have viewed such functionality as tangential to the purpose of the amendments. Id. at 681:6-21. The purpose of the amendment was to deal with situations like Figure 2 where when a displayed number changes, the real value of that cell changes. See e.g., id. Mr. Thomas explained that Price Hold functionality that keeps the real value the same, but moves the displayed price label, was tangential to this purpose. Id. CQG offered no proof to rebut any of this at trial. For example, Dr. Mellor said nothing to challenge Mr. Thomas' testimony on unforseeability or tangential. See generally id.; Trial Tr. (Mellor) 1869 et. seq.

Accordingly, the evidence established at trial clearly shows that the accused Price Hold functionality was not foreseeable at the time of the amendments and was tangential to the purpose of the amendment. Thus, even if there is a rebuttable presumption of PHE, the undisputed evidence establishes by more than a preponderance of the evidence4 that the presumption has been overcome and PHE does not apply to the accused DOMTrader product.

Once PHE is removed, this Court should also grant TT's motion for a finding under Rule 50(b) that the accused DOMTrader product infringes under the DOE because no reasonable jury could reach any other conclusion based on the evidence put forth at trial. Indeed, TT proffered detailed and overwhelming evidence proving that the DOMTrader infringes under the DOE, including a full analysis from its technical expert explaining how the "function/way/result" test and the "interchangeability" test were both met. CQG's alleged expert, on the other hand, did not even mention these tests, let alone rebut any of this testimony from TT's expert. Instead, he merely made the following vague and conclusory statement "[w]ell, something that moves can't be close enough to something that's required to not move. So they can't be equivalent." Ex. A, Trial Tr. (Mellor) at 1911:3-5. This falls woefully short of rebutting TT's DOE case and cannot support a verdict of non-infringement. In this event, there would also need to be a new trial on related issues, such as damages and willfulness. At the very least, the Court should grant TT's alternative motion for a new trial under Rule 59 to permit the jury to consider infringement under the DOE (along with the associated damages resulting from that infringement and willfulness).

IV. IF THERE IS NO COLLATERAL ESTOPPEL FOR ANY REASON, TT PREVAILS ON INFRINGEMENT UNDER THE DOE

TT notes for the record that if the merits are considered, it is clear that PFIE does not apply for multiple reasons and that CQG infringes under the DOE. In other words, if either aspect of this Court's collateral estoppel ruling is wrong (scope of surrender or the Festo exceptions), TT prevails on DOE. As already noted above in Section III, the Festo exceptions result in no PHE even if there is a rebuttable presumption.

In addition, on the merits, there is no rebuttable presumption of PHE in the first place because the accused DOMTrader is not within the scope of what was surrendered by the relevant amendments made during the prosecution of the patents-in-suit. The amendments merely require price levels that do not move in response to a change in the inside market, not price levels that do not move in response to every change in the inside market. Ex. A, Trial Tr. (Thomas) 678:8-679:16. The Court has already noted that this is the express language of the amendments. Id. at 1946:1-3; Dkt. 1175 at 2. This means that what is surrendered by the amendment is a screen in which the prices move in response to every change in the inside market. Ex. A, Trial Tr. (Thomas) 678:10-23. TT's technical expert at trial (Mr. Thomas) illustrated this with demonstratives at 679:1-16, which show a screen like Figure 2 of the patents in suit (where the prices change with every change in the inside market) as what is surrendered and the CQG's DOM Trader as not being surrendered. Ex. B (PTX 5648). Importantly, CQG's expert, Dr. Mellor, admitted that the amendments (which govern the scope of surrender) only require that the prices do not move in response to a change in the inside market. Id. at 1945-22-1946:6; Ex. C (Expert Report of Dr. Mellor), ¶¶ 145-47. Moreover, he admitted that there is no requirement that the prices do not move in response to every change in the inside market. Id. CQG has also admitted that the Market Mode with Price Hold operates such that the prices do not move in response to at least one change in the inside market.5 Ex. A, Trial Tr. (Mellor) 1926:7-1927:13. These admissions are determinative because the accused product indisputably meets the language of the amendment and is not surrendered. Accordingly, because the accused DOMTrader product is not within the scope of what was surrendered in the amendments, there is no rebuttable presumption of PHE.

As explained in Section III above, without PHE, CQG infringes under the DOE because the evidence is clear that the relevant accused products are equivalent.

V. CONCLUSION

This Court's ruling was based entirely on collateral estoppel, a pure legal issue that TT will take up on appeal. However, to the extent this Court based its decision on the underlying merits of PHE and found a lack of Festo exceptions, then this Court should grant TT Rule 50(b) motion and find that there is no PHE based on the undisputed evidence at trial that two of the Festo exceptions apply, which overcomes any such presumption of PHE. Once PHE is removed, this Court should also grant TT's motion for a finding under Rule 50(b) that the accused DOMTrader product infringes under the DOE because no reasonable jury could find otherwise based on the evidence at trial. Alternatively, TT moves under 59 for a new trial to permit the jury to consider infringement under the DOE (along with the associated damages resulting that infringement and willfulness).

INDEX OF EXHIBITS TO TT'S MOTION FOR JUDGEMENT AS A MATTER OF LAW CONCERNING PHE AND INFRINGEMENT UNDER THE DOE AND FOR A NEW TRIAL

Exhibit A

VOLUME 1 TRANSCRIPT OF PROCEEDINGS BEFORE THE HONORABLE SHARON JOHNSON COLEMAN, and a jury

screens that we talked about last week?

A No, this is very different.

Q And how is it different than those conventional screens?

A Okay. Now, if you remember the conventional screens, when we had the prices — so every single time the inside market changed, those prices changed. But that's the real value of that price. The real value of that price is changing.

Here what's happening is the label associated with the price may move, but the real price associated with where the mouse was is still there. Otherwise, it wouldn't get my order. So it's kind of a gimmick in a way.

Q When you say a gimmick, what do you mean by a gimmick?

A Well, think of it this way. Imagine — imagine you've got your keyboard on your computer, and somebody paints a Z on the A key. If I press the A — well, now what it's saying, it's a Z key. If I press it, I still get A, though. So it's kind of a gimmick.

The real thing that you get — that you want is still associated when the mouse is hovering.

Q Okay. And you mentioned to get into this mode, you need fast click?

A That's correct, yeah.

Q What is that?

A Well, fast click is a — it's a menu setting. And that's needed to get into this.

A Because —

MR. VOLLER: Objection, question of law.

THE COURT: Response?

MR. GANNON: Your Honor, I'm asking about whether or not the amendment has any impact on the analysis.

THE COURT: Objection sustained.

BY MR. GANNON:

Q Mr. Thomas, do you know what was surrendered during the prosecution of the patents, if anything?

A Yes. In order to know that, you've got to look at the language of the amendment. The amendment says, "wherein the static display of prices does not move in response to a change in the inside market."

So if you have a product such as the DOMTrader that does not — where the prices do not move in response to a change in the inside market, that is clearly inside the scope of the amendment.

Now, what is outside of it or was surrendered, as you asked, was products where the inside market changes — where the prices move with every change in the inside market. And that could be such as the market grid type interface that we saw where the inside market, the prices are flipping out. So that was what was surrendered, that type of thing.

Q Okay. Did you prepare a slide to go over this with the jury just briefly?

A Sure. So inside here we have TT's patent static price axis, and outside of it is kind of an imaginary fence that shows you the boundary of the scope of equivalents.

Q What does the slide show, Mr. Thomas?

A So when the amendment was made, that fence had to be changed a little bit because something was given up. And what it shows is outside the fence is the market grid type screen where the prices are moving with every change in the inside market.

Q So are you saying that TT gave up screens like the conventional Figure 2 screens?

A That is correct.

Q What does this slide show?

A So this shows the DOMTrader and it's inside the fence. And the reason it's inside the fence is because the price levels do not move in response to a change in the inside market.

Q Mr. Thomas, let's assume that prosecution history estoppel did apply in this case. Would that change your opinion in any way as to whether doctrine of equivalents would be available?

A No, and there's two reasons for that. There are exceptions to prosecution history estoppel. The first is unforeseeable and the second is tangential. I'm going to talk about unforeseeable first.

So what unforeseeable is, there can be no prosecution history estoppel if it was unforeseeable to one of ordinary skill in the art that the functionality — the functionality in question.

So in this case, it's an axis that has automatic movement with price hold. If that was unforeseeable at the time the amendment was made through this person of ordinary skill in the art, then there can be no prosecution history estoppel.

Q You mentioned a person of ordinary skill in the art. Who is that?

A So my definition of a person of ordinary skill in the art is a person that has, one, a bachelor's degree or equivalent experience, and two, two years of experience designing and/or programming graphical user interfaces including experience designing and/or programming graphical user interfaces for electronic trading based on input from a person with knowledge of the needs of an electronic trader.

Q Okay. Do you meet this definition, Mr. Thomas?

A I exceed it.

Q Okay. So based on this, was price hold foreseeable at the time of the amendment?

A In my opinion, price hold was not foreseeable at the time of the amendment.

Q And why is that?

A Well, first of all, price hold — back at that time, I think it would have been unthinkable for a programmer or a user of a mission-critical trading system to have functionality where the price that you're hovering over having labels that would move and be different. To me, that's completely unforeseeable because this is a mission-critical application, and I just can't think of how that would happen.

Q Let's go to the next slide. What's the other exception, Mr. Thomas?

A So the other exception is what's called tangential. And what that is, that says there can be no prosecution history estoppel if the reasoning behind the amendment bears only a tangential relation to the equivalent. In this case, the equivalent is the price axis that has movement with price hold.

Q And do you have an opinion on whether the tangential exception applies in this case?

A Yeah. My opinion it does — is that the exception does apply. And the reason for that is — so the reason behind the amendment was for, say, a Figure 2 type screen where you're actually moving the physical price that's underneath it.

With the equivalent, you're not moving the physical price. You're moving a label. So that has a tangential or, in my opinion, no relation to that.

Q Okay. So we've talked about DOMTrader. Let's switch gears and talk a little bit about ChartTrader. What is ChartTrader?

A ChartTrader is a window that's available in some versions of Integrated Client.

A But that's a loaded question. Some products it's going to be true. The other products you cannot hold this price scale in place for seconds because they move significantly more rapidly than the product that we're looking at here.

Q So can you answer my question about — we're talking about U.S. Treasury notes, this here.

The question is if this bid and ask, all right, are staying within the grid, the prices would not move, correct?

MR. VOLLER: Objection, calls for speculation.

THE COURT: Objection sustained.

BY MS. KURCZ:

Q Now, isn't it true, do you know that if the best bid and the best ask in this example right here stay within this displayed range, the prices will not move, right?

MR. VOLLER: Objection, your Honor, calls for speculation.

THE COURT: Objection is overruled. If he can answer.

THE WITNESS: The goal of the DOMTrader is to show the market prices where the trading is taking place. If there's no need to repaint them, if all of the trading's taking place in the price range that is currently visible, then the prices will not change.

BY MS. KURCZ:

Q I think that was a yes, right?

A I think I'm giving you like the more complete answer rather

THE COURT: All right. Next witness.

MR. GARNETT: CQG calls Dr. John Phillip Mellor.

THE COURT: Dr. Mellor, step forward.

(Witness duly sworn and takes the stand.)

THE WITNESS: I do.

THE COURT: All right. Push the mike back so you can sit comfortably. All right. Pull it down, sir, to your comfort level. And the water is there for you.

Proceed when you're ready, Mr. Garnett.

MR. GARNETT: Okay.

JOHN PHILLIP MELLOR, Ph.D., DEFENDANTS' WITNESS, SWORN DIRECT EXAMINATION

BY MR. GARNETT:

Q Good afternoon —

THE COURT: Oh, I'm sorry. I'm sorry.

MR. GARNETT: That's okay.

THE COURT: Ladies and gentlemen, this is Dr. John Phillip Mellor, and he's a professor of computer science and software engineering at Rose-Hulman Institute of Technology.

BY MR. GARNETT:

Q Good afternoon, Dr. Mellor.

A Good afternoon.

Q Would you please tell the jury what you're here to testify about.

A I'm here to testify about the operation of CQG's products

Q And what's your opinion on whether CQG's products are close enough to TT's patents?

A Well, something that moves can't be close enough to something that's required to not move. So they can't be equivalent.

Q Okay. Dr. Mellor, I think you said earlier that you read the back and forth between the inventor and the patent office before TT's patents issued.

A I did.

Q How does that back and forth with the PTO, or patent office, affect your opinion?

THE WITNESS: Well, I've got a couple slides to help with that.

THE COURT: Any objection?

MR. GANNON: No objection.

THE WITNESS: So when the patent — or the inventor first submitted his patent to the patent office, the examiner rejected the claims.

And in that back and forth between the inventor and the patent office, it's kind of like a negotiation to try and figure out what is in the patent and what isn't. This is what the inventors told the patent office. They said, in summary, the values in the price column remain static. They don't move.

And the only exception that they cited was a recentering command.

into account the perspective of the user, correct?

A I don't agree with that.

Q But you agree that that question and answer were asked at your deposition, right?

A I do.

Q Let put up PTX 6007, please, Brian.

And Dr. Mellor, what I'm showing you here is a video. If you want to start running it, Brian, that's fine. It's of the DOMTrader Integrated Client. The version is 13.4808. It's version Range 9 from your report, Dr. Mellor. And the product is the 10-year treasury.

And this was taken during the trading day for more than five hours, and you can see on the screen we've actually sped it up five times actual speed. And you can see that on the timer on the right. Do you see that, Dr. Mellor?

A I see that timer.

Q Do you see the price axis shown there?

A I do.

Q And in this particular example, there's no price selected, correct?

A That is correct.

Q And the price levels on the screen go from 128120 at the bottom up to 128280 at the top. Do you see that?

A I do.

Q And by my count, that's 33 price levels; is that right?

A Well, I can count them real quick. Off the top of my head, I couldn't tell you how many rows there are.

Q Okay. Do you see the inside market moving relative to the price axis?

A I haven't been — yeah, I see it moving.

Q Okay. And as you're watching this, Dr. Mellor, it's true that none of the price levels are moving, correct?

In other words, the price levels are remaining from 120 to 280, correct?

A So far in this video, yes.

Q And you can see that so far, as long as we've watched it, the price axis or the price levels has not moved, right?

A So far.

Q So in this example, when a price is not selected for this particular version, it's true that as long as the best bid and the best ask remain between the bottom level and the top level and as long as a shift-K event isn't happening, those price levels will not move, correct?

A I'm not sure I agree with that.

Q In this particular state, when a price is not selected and the inside market does not — stays within the range of the screen between 180 — or excuse me, 120 and 280, okay, I want you to assume that it's going to stay in that range and a price is selected and the product is in that state.

You agree that those price levels will not move so

MR. GARNETT: Your Honor, this is claim construction.

THE COURT: Objection sustained. The jury will have the claim construction. You can make the argument.

MR. GANNON: Your Honor, this is an amendment that was made during the prosecution.

THE COURT: Yes.

MR. GANNON: And I'm just asking for the witness' understanding since he already talked about this particular amendment.

THE COURT: Overruled. I'll allow it. Again, whatever the answer is, the jury's going to decide with the claim construction you will have from the Court, the information from the experts as to what should be the proper finding. Proceed.

BY MR. GANNON:

Q And just one question. You agree that the language of this amendment does not require that the prices do not move in response to every change in the inside market, correct?

A I don't think I agree with what you just said. There's a couple of double negatives in there, and I'm not sure I'm parsing it correctly.

Q All right. I just want to make sure it's clear. You're saying that this wherein clause says that — well, that the wherein clause requires that the static display of prices does not move in response to a change, correct?

THE COURT: Excuse me, Counsel. The document speaks for itself. He read the document. Let's ask something else. It says a change.

BY MR. GANNON:

Q And you agreed with that?

A I think I read it and I think it's pretty clear.

Q Can we put up Dr. Mellor's Demonstrative 19, please.

You talked about this earlier today with respect to canceling orders, correct?

A I believe so.

Q Now, when a trader cancels an order, that's completely within the control of the trader, correct?

A Are you asking me if the trader cancels the order?

Q I'm saying when a trader goes to do that, he knows what he's doing when he cancels, right? In other words, that's a manual action that the trader takes to cancel, right?

MR. GARNETT: Objection, your Honor. Calls for speculation.

THE COURT: I think the form of the question, you need to change the question. Sustained.

BY MR. GANNON:

Q Is that a manual command to cancel the order?

A Canceling an order is a manual command.

Q And the trader is in control of that manual command, right? In other words, the trader does that, not the software?

Exhibit B

Exhibit D

Jonathan M. Boulahanis, Andrew M. Hale & Associates, Chicago, IL.

DEFENDANT STOLL'S MOTION TO BAR PLAINTIFF'S ILLEGAL SEARCH AND SEIZURE CLAIM, OR IN THE ALTERNATIVE, GRANT JUDGMENT AS A MA TTER OF LA W ON THAT CLAIM

NORGLE, District Judge.

*1 Defendant Chicago Police Officer Kevin Stoll ("Defendant"), by his undersigned attorney, respectfully requests that this Honorable Court bar Plaintiff from submitting his unlawful search/seizure claim to the jury, or, in the alternative grant him judgment as a matter of law on the claimFN1

Legal Standard

The Federal Rules of Civil Procedure provide for a district court to decide issues during a jury trial and grant judgment as a matter of law. Under Rule 50 of the Federal Rules of Civil Procedure, "[i]f a party has been fully heard on an issue during a jury trial and the court finds that a reasonable jury would not have a legally sufficient evidentiary basis to find for the party on that issue, the court may: resolve the issue against the party . . ." Fed.R.Civ.P. 50(A). The Seventh Circuit has held the standard to be as follows:

Rule 50(a) of the Federal Rules of Civil Procedure allows a district court to enter judgment against a party who has been fully heard on an issue during a jury trial if "a reasonable jury would not have a legally sufficient evidentiary basis to find for the party on that issue." The stringent standard for a judgment as a matter of law under Federal Rule of Civil Procedure 50 is the same whether the verdict under review was for the plaintiff or the defendant, and regardless of the underlying legal issues of the case. Under Rule 50, both the district court and an appellate court must construe the facts strictly in favor of the party that prevailed at trial. See Tart v. Illinois Power Co., 366 F.3d 461, 464 (7th Cir.2004), citing Reeves v. Sanderson Plumbing Products, Inc., 530 U.S. 133, 150-51, 120 S.Ct. 2097, 147 L.Ed.2d 105 (2000).

Schandelmeier v. Bartels v. Chicago ParkDist., 634 F.3d 372, 376 (7th Cir.2011).

1. Plaintiff Never Pled An Illegal Search and Seizure Claim.

Prior to trial, Defendants filed a motion in limine seeking to bar Plaintiffs illegal search and seizure claim because it was never pled. (See Dkt. No. 90, Nov. 30, 2011, Motion In Limine No. 5). Plaintiffs pro-se complaint was the operative pleading in this case. (See Dkt. No. 6, Apr. 6, 2009). Even after being appointed, Plaintiffs counsel never amended the complaint, and never attempted to add this claim. That claim is time-barred, and Plaintiff should not be permitted to amend his pleading at this stage of litigation. See Fed.R.Civ.P. 15(a)(2). Defendant Stoll would be prejudiced if this claim is submitted to the jury because he was never given the opportunity to develop evidence such as whether Plaintiff had any expectation of privacy, ownership, or residency interest in the premises. Therefore, this Court should not allow the illegal search and seizure claim to be presented to the jury.

2. Plaintiff Is Collaterally Estopped From Asserting An Illegal Search and Seizure Claim.

On August 27, 2008, Plaintiff brought a motion to quash his arrest and to suppress evidence. (See Motion To Suppress Transcript of Aug. 27, 2008, Judge Marjorie Laws, attached hereto as Exhibit A). Judge Laws specifically stated the issues she was determining at that motion, which included the legality of the alleged seizure of McMillan in his home. (See Ex. A at 26-28). Judge Laws determined at that motion that McMillan voluntarily stepped outside of his apartment, and was placed under arrest. Id. Plaintiff, who was the criminal defendant at the time, never challenged this finding, nor did he present any evidence to rebut that finding at the motion hearing. Id. at 27. Judge Laws thereby denied Plaintiffs motion to suppress. Id. at 28. After that motion to suppress, Plaintiff pled guilty to the robbery for which he was charged. (See Certified Statement of Conviction, attached hereto as Exhibit B). Plaintiff never appealed his plea of guilty.

*2 Collateral estoppel can be invoked against a § 1983 claimant to bar relitigation of his Fourth Amendment search and seizure claim decided against him in a criminal suppression hearing. Allen v. McCurry, 449 U.S. 90, 104-05, 101 S.Ct. 411, 420, 66 L.Ed.2d 308 (1980). "[T]he application of the collateral estoppel doctrine to § 1983 claims turns on whether the "traditional" four collateral estoppel requirements have been met: i.e., the issue sought to be precluded must be the same as that involved in the prior judicial proceeding; the issue was litigated in the prior action; the issue was in fact actually determined in the prior proceeding; and the determination of that issue was necessary to support the judgment in the prior proceeding." Guenther v. Homgreen, 738 F.2d 879, 883-84 (7th Cir. 1984). The ruling has preclusive effect when there is a final judgment on the merits, such as a judgment of conviction. Best v. City of Portland, 554 F.3d 698, 701 (7th Cir.2009).

In this case, Plaintiff attacked the search and seizure when he brought a motion to quash the arrest and suppress evidence in August 2008. That motion was denied, and Judge Laws specifically ruled on the issue of McMillan's seizure. McMillan thereafter pled guilty and never appealed. Therefore, he is collaterally estopped from bringing this issue in front of the jury.

3. The Evidence, As It Came In, Entitles Detective Stoll To Judgment As A Matter of Law.

The evidence, as it came in in a light most favorable to Plaintiff is as follows: (1) On April 6, 2008, Defendant Stoll had reason to believe that McMillan was an active participant in a robbery that occurred on March 18, 2008; (2) Detective Stoll has received information from McMillan's cooffender that he might be armed; (3) Detective Stoll found information that McMillan might be located at 7247 S. Union; (4) Detective Stoll entered the apartment building from the outside; (5) When Detective Stoll went upstairs, the McMillan apartment door was open; (6) Detective Stoll asked for Kevin McMillan and Antoine McMillan made himself visible; (7) Detective Stoll entered the McMillan residence in the dining room; (8) Detective Stoll put McMillan in handcuffs and exited the apartment; (8) no search was conducted on the premises.

A warrantless entry into a private home constitutes a search and is presumptively unreasonable under the Fourth Amendment. Payton v. New York, 445 U.S. 573, 585-86, 100 S.Ct. 1371, 63 L.Ed.2d 639 (1980). However, a warrantless search is permissible "when police have a reasonable belief that exigent circumstances require immediate action and there is no time to secure a warrant." United States v. Lenoir, 318 F.3d 725, 730 (7th Cir.2003). Exigent circumstances exist "when the police reasonably fear for the safety of someone inside the premises." United States v. Jenkins, 329 F.3d 579, 581 (7th Cir.2003).

Further, when a person knowingly exposes him or herself to the public, even in his own home or office, he or she is not entitled to Fourth Amendment protection. Katz v. United States, 389 U.S. 347. 351, 88 S.Ct. 507, 19 L.Ed.2d 576 (1967); see United States v. Santana, 427 U.S. 38, 96 S.Ct. 2406, 49 L.Ed.2d 300 (1976) (Santana, who exposed herself to the police, was properly arrested upon probable cause); see also United States v. Sewell, 942 F.2d 1209 (7th Cir. 1991) ("A person has no expectation of privacy when he knowingly exposes himself to the public, even in his own house or office. . .").

*3 In this case, as the evidence came in, Detective Stoll is entitled to judgment as a matter of law for two independent reasons. First, Detective Stoll was armed with exigent circumstances to make a warrantless entry. Detective Stoll testified that he had reason to believe that McMillan was an offender in a strong-arm robbery, a serious felony. Detective Stoll testified that the co-offender, Timothy McClinton gave him reason to believe that McMillan was armed. Once Stoll verified that Mc-Millan was in the home, a reasonable officer would fear for his own safety and the safety of others in the home. Therefore, entry (which is disputed) was proper.

Second, Plaintiff exposed himself to Detective Stoll and had no expectation of privacy. Stoll testified that he saw McMillan through the doorway. There was no testimony to rebut that. McMillan testified that Stoll came through the door, directly towards him. McMillan testified that Stoll immediately handcuffed him and left. Therefore, under Katz and Sewell McMillan is not protected by the Fourth Amendment.

WHEREFORE, Defendant Stoll respectfully requests that this Honorable Court enter an order barring Plaintiffs search and seizure claim from going to the jury, or in the alternative, granting him judgment as a matter of law under Rule 50 of the Federal Rules of Civil Procedure.

David T. Pritikin, Richard A. Cederoth, Richard Francis O'Malley, Robert Douglas Leighton, Sidley Austin LLP, Chicago, IL, Benjamin B. Kelly, James Patrick Bradley, Kelley A. Conaty, Kristoffer B. Leftwich, Mark Alan Dodd, Steven Charles Malin, Vijay D. Desai, Sidley Austin LLP, Dallas, TX, for Tellabs Operations, Inc.

David C. Van Dyke, Joseph W. Barber, Thomas Jefferson Ramsdell, III, Howard and Howard, Kimberly Michelle Hume, Lea Ann Chambers Fracasso, Trisha K. Tesmer, Cassiday Schade LLP, Chicago, IL, Alyssa Margaret Caridis, Christopher Allen Hivick, James Brooks, Michael David Owens, Orrick, Herrington & Sutcliffe LLP, Los Angeles, CA, David E. Wang, Orrick, Herrington & Sutcliffe LLP, Menlo Park, CA, Gino Cheng, Glen Liu, Orrick, Herrington & Sutcliffe LLP, Irvine, CA, Joseph A. Panatera, Kenneth J. Allen & Associates PC, Valparaiso, IN, Mark Jonathan Shean, Mark Philip Wine, Thomas S. McConville, Orrick Herrington & Sutcliffe LLP, Irvine, CA, Robert M. Isackson, Orrick, Herrington & Sutcliffe, New York, NY, for Fujitsu Limited.

MEMORANDUM OPINION AND ORDER DENING PARTIES' RESPECTIVE REQ UESTS FOR JUDGMENT AS A MATTER OF LAW AND DENING FUJITSU LIMITED'S REQ UEST FOR ANEW TRIAL REGARDING FUJITSU LIMITED'S '681 PATENT

JAMES F. HOLDERMAN, Chief Judge.

*1 Counterclaimant Fujitsu Limited alleged in this lawsuit that Tellabs Operations, Inc., Tellabs, Inc., and Tellabs North America, Inc. (collectively "Tellabs") infringed Claims 6, 7, and 8 of Fujitsu Limited's U.S. Patent No. 7,227,681 (the "'681 Patent") by making or selling Tellabs' Metro Input Amplifier Module (the "MIAM module") product. Tellabs in response asserted that the '681 Patent was invalid by reason of anticipation and obviousness. At the close of a nine-day jury trial, the jury returned a verdict on September 7, 2012 of noninfringement for each of the asserted claims, and upheld the'681 Patent as unanticipated and nonobvious.

Pending before the court are "Fujitsu's Renewed Motion for Judgment as a Matter of Law that Tellabs Infringes Claims 6, 7, and 8 of U.S. Patent No. 7,228,681, Notwithstanding the Jury Verdict of Non-Infringement; or, Alternatively Motion for a New Trial" (Case No. 09 C 4530, Dkt. No. 962) and "Tellabs, Inc.'s, Tellabs Operations, Inc.'s, and Tellabs North America, Inc.'s Renewed Motion for Judgment as a Matter of Law that U.S. Patent No. 7,227,681 Is Invalid" (Case No. 08 C 3379, Dkt. No. 566). For the reasons that follow below, both motions are denied.

BACKGROUND

The '681 Patent issued on June 5, 2007, and is titled "Controller Which Controls a Variable Optical Attenuator to Control the Power Level of a Wavelength-Multiplexed Optical Signal When the Number of Channels Are Varied." ('681 Patent (Joint Ex.2000) at (54).) Yasushi Sugaya and Susumu Kinoshita are the named inventors on the '681 Patent, and Fujitsu Limited is the assignee. ('681 Patent at (75), (73).)

The '681 Patent "relates to a fiber optic communication system which uses wavelength division multiplexing to transmit a wavelength-multiplexed optical signal." ('681 Patent, col. 1:33-35.) "Wavelength division multiplexing" is method of combining multiple channels of information having different individual wavelengths into one wavelength-multiplexed optical signal. (See generally '681 Patent, col. 1:44-65.) In fiber optic communication systems using wavelength division multiplexing, an optical amplifier is used "to amplify the wavelengthmultiplexed optical signal traveling through [the] optical fiber." ('681 Patent, col. 1:66-67; col. 2:1-3.) This amplification or increase in power is known as "gain." (Case No. 08 C 3379, Dkt. No. 234 ("9/23/09 Tech. Tutorial Tr.") at 66:21-25; Case No. 08 C 3379, Dkt. No. 287 ("2/23/10 Tech. Tutorial Tr.") at 450:5-6.)

As this court explained in its September 29, 2011 claim construction opinion:

Fujitsu Ltd. v. Tel labs Operations, Inc., 821 F.Supp.2d 1009, 1054 (N.D.Ill.2011).

Fujitsu Limited asserted three claims of the ` 681 Patent at trial: Claim 6, Claim 7, and Claim 8. The asserted claims of the'681 Patent read as follows, with the court's claim interpretations of the italicized terms inserted in brackets:

6. An apparatus comprising:

As stated above, the accused device in this case is Tellabs' MIAM module product. Specifically, Fujitsu Limited alleged that Tellabs' MIAM module product is an apparatus comprising an "optical amplifier" as described in Claims 6, 7, and 8 of the ` 681 Patent. Relevant to the controller element of all three asserted claims, it is undisputed that the MIAM module product incorporates an optical gain block manufactured by a company named RED-C Optical Networks, Ltd. ("RED-C"), and that RED-C also designed the gain-control algorithm used by the optical gain block.

Fujitsu Limited presented several witnesses in its case-in-chief, including: Mr. Yasushi Sugaya, one of the inventors of the '681 Patent; Dr. Uri Ghera, the head of research and development at RED-C; and Dr. Alan Willner, Fujitsu Limited's expert witness. Mr. Sugaya's testimony focused on the amplifier technology described by the '681 Patent; Dr. Ghera's testimony focused on the components used in, and the operation of, the MIAM module product; and Dr. Willner's testimony focused on general optical amplifier principles and Dr. Willner's expert opinion that Tellabs' MIAM module product infringed the asserted claims of the '681 Patent. Fujitsu Limited also offered into evidence, among other exhibits, a document titled "Hardware Requirements Specification TELLABS 7100 E-OGB for Amplifier Modules," setting forth Tellabs' hardware specifications for its optical amplifier products. (Fujitsu Ex.2012.)

*3 Tellabs denied that its MIAM module product infringed the asserted claims of the '681 Patent and further alleged that the '681 Patent was invalid as both anticipated and obvious. Tellabs relied primarily on its expert witness, Dr. A. Bruce Buckman, to support its theories of noninfringement and invalidity. Tellabs also offered into evidence three items of admitted prior art in support of its invalidity claim. With respect to anticipation, Tellabs presented U.S. Patent No. 6,055,092 (the "'092 Patent"), titled "Multi-Wavelength Light Amplifier." (Tellabs Ex. DX-134.) The '092 Patent was filed on May 28, 1996, and lists Mr. Sugaya as a named inventor. ('092 Patent at [22], [75].) Fujitsu Limited is the assignee of the '092 Patent. ('092 Patent at [73].) With respect to obviousness, Tellabs presented an article published in July of 1995 by the Institute of Electronics, Information and Communication Engineers, Configuration Design of Multi-Wavelength Er-Doped Fiber Amplifier for WDM Transmission System, Technical Report of IEICE OCS95-96 (1995-07), written in part by Mr. Sugaya (the "July 1995 Sugaya Article") (Tellabs Ex. DX-031), as well as U.S. Patent No. 5,083,874 (the "'874 Patent"), titled "Optical Repeater and Optical Network Using the Same" and filed on April 10, 1990 (Tellabs Ex. DX029 at [22]).

During Fujitsu Limited's rebuttal case, Dr. Willner provided his expert opinion that the '681 Patent was not anticipated by the '092 Patent or rendered obvious by the July 1995 Sugaya Article in combination with the '874 Patent.

The jury deliberated for three days before returning its verdict that the '681 Patent was not invalid and was not infringed.

Notwithstanding the jury's verdict, Fujitsu Limited requests that this court enter judgment as a matter of law that the '681 Patent was infringed by Tellabs and, in the alternative, requests a new trial on the merits. Tellabs requests that this court enter judgment as a matter of law that the '681 Patent is invalid as anticipated or obvious.

LEGAL STANDARD

Judgment as a matter of law is appropriate as to a particular issue when "a reasonable jury would not have a legally sufficient evidentiary basis to find for the party on that issue." Fed.R.Civ.P. 50(a). "The district court may not resolve any conflicts in the testimony nor weigh the evidence, except to the extent of determining whether substantial evidence could support a jury verdict: `[A] mere scintilla of evidence will not suffice.'" Lane v. Hardee's Food Sys., Inc., 184 F.3d 705, 707 (7th Cir. 1999) (quoting La Montagne v. American Convenience Products, Inc., 750 F.2d 1405, 1410 (7th Cir. 1984).FN2 In deciding a motion for judgment as a matter of law, "the court should review all of the evidence in the record" and "should give credence to the evidence favoring the nonmovant as well as that evidence supporting the moving party that is uncontradicted and unimpeached." Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 151, 120 S.Ct. 2097, 147 L.Ed.2d 105 (2000). A jury's verdict will be overturned only if it is determined that no rational jury could have found for the non-moving party. Waite v. Bd. of Trustees of III. Cmty. Coll. Dist. No. 508, 408 F.3d 339, 343 (7th Cir.2005); see also Lebow v. Am. Trans Air, Inc., 86 F.3d 661, 664 (7th Cir. 1996) (judgment as a matter of law appropriate "only if there can be but one conclusion from evidence and inferences reasonably drawn therefrom") (internal quotation marks and citation omitted).

*4 Motions for new trials under Rule 59(a) are addressed to the discretion of the district court, and the "district court must determine whether the verdict was against the manifest weight of the evidence, the damages are excessive, or if for other reasons the trial was not fair to the moving party." Frizzell v. Szabo, 647 F.3d 698, 702 (7th Cir.2011). The jury's verdict should be set aside as contrary to the manifest weight of the evidence only if "no rational jury" could have rendered the verdict. Moore v. Tuleja, 546 F.3d 423, 427 (7th Cir.2008).

ANALYSIS

The first order of business is to determine whether Fujitsu Limited has properly presented its motion. Tellabs argues that Fujitsu Limited's motion should not be considered by this court because it is untimely. Fujitsu Limited made an oral Rule 50(a) motion at the close of Tellabs' case-in-chief on September 4, 2012. Fujitsu Limited also requested, without objection by Tellabs, that it be allowed until September 10, 2012 to file an accompanying written motion, and this request was granted. On September 5, 2012, Tellabs was also given until September 10, 2012 to file its written motion for judgment as a matter of law. On September 7, 2012 the jury returned its verdict. At that time Fujitsu Limited was granted, without objection, until October 5, 2012, to file its written motion for judgment as a matter of law, along with its other motions for post-trial relief. Fujitsu Limited therefore did not submit a written motion for judgment as a matter of law until October 5, 2012, twenty-eight days after the jury returned its verdict.

Although Fujitsu Limited's September 4, 2012 oral motion did not "specify the judgment sought and the law and facts that entitle the movant to the judgment," Fed.R.Civ.P. 50(a)(2), and Fujitsu Limited's Octover 5, 2012 written motion was not filed "before the case [was] submitted to the jury," id., Tellabs made no objection at the time Fujitsu Limited sought an extension, and is not prejudiced by Fujitsu Limited's late filing. See Leader Tech, Inc. v. Facebook, Inc., 110 F.Supp.2d 686, 715 (D.Del.2011) ("to the extent there is any doubt as to whether Leader's oral pre-verdict Rule 50(a) motion was sufficiently specific, those doubts are erased by Leader's subsequent filing of its written Rule 50(a) motion, which was filed consistent with the timing allowed by the Court"). Fujitsu Limited's renewed motion for judgment as a matter of law is properly before this court, and the court will address the merits of the parties' respective motions.

1. Fujitsu Limited's Renewed Motion for Judgment as a Matter of Law and Alternative Motion for a New Trial

Both parties agree that the success of Fujitsu Limited's infringement contentions at trial depended on whether Fujitsu Limited proved by a preponderance of the evidence that Tellabs' MIAM module product includes "a controller which controls the gain to be approximately constant." (See Case No. 09 C 4530, Dkt. No. 962 ("Fujitsu's JMOL") at 3 ("The sole missing claim element disputed by Dr. Buckman was the `controller which controls the gain to be approximately constant.'"); see also Case No. 09 C 4530, Dkt. No. 974 ("Tellabs' Resp." at 9 ("Specifically, the Tellabs Defendants and Dr. Buckman established that the accused MIAM module does not include the controller required by each of the asserted claims. . . .")). In light of the substantial evidence of noninfringement presented to the jury in this case, Fujitsu Limited's motion for judgment as a matter of law on the question of infringement is denied.

*5 As recognized by Fujitsu Limited, Dr. Buckman testified at trial that a person of ordinary skill in the art would understand Claim 6 to require an optical amplifier to hold the gain approximately constant before, during, and after a change in the number of channels. (Fujitsu's JMOL at 10 (citing Trial Tr. 1049:23-1052:15))FN3 Dr. Buckman further testified that the MIAM module product allowed for a ± 0.8 dB "maximum excursion" in the gain during a change in the number of channels, which was "a little over three times" the "steady state gain error band" allowed when the number of channels was not changing. (Trial Tr. at 834:13-19; see generally Trial Tr. 822-834.)

Dr. Buckman illustrated the MIAM module product's response during a change in the number of channels using Fujitsu Exhibit 2012—a Tellabsauthored technical specification document originally introduced into evidence at trial by Fujitsu Limited. (See Fujitsu Ex.2012 at 2012-14 (Fig.4) & 2012-15 (Table 1)). Dr. Buckman concluded from this evidence that "the gain is not kept constant" in the MIAM module product during a change in the number of channels. (Trial Tr. 836:7-17). No other evidence of the MIAM module product's response characteristics during an actual change in the number of channels was introduced by either party at trial.

Fujitsu Limited argues that it is nevertheless entitled to judgment as a matter of law on its infringement claims, because "Dr. Buckman's theory did not withstand cross-examination." (Fujitsu's JMOL at 13.) Fujitsu Limited's argument rests on (1) Dr. Buckman's testimony on cross examination that the ± 0.8 dB maximum excursion in the gain during a change in the number of channels represents the MIAM module product's reaction to a "fiber cut event" in which all channels but one are suddenly dropped, and Dr. Buckman's follow-up testimony that he "would expect that [the excursion] wouldn't be as high" if fewer channels were dropped in the "normal" course of operation (Trial Tr. at 1088:4-1092:10; see also Fujitsu Ex.2012 at 2012-13 & 2012-14); (2) Dr. Buckman's testimony on cross examination that the ± 0.8 dB maximum excursion in the gain during a change in the number of channels is only 1/15th the size of a standard 12 dB signal and lasts for only 1/5,000th of a second (Trial Tr. at 1092:11-1096:20; 1099:24-1102:3); and (3) Dr. Buckman's testimony on cross examination acknowledging that Tellabs' specifications state that the design function of the Automatic Gain Control ("AGC") circuit in Tellabs' optical amplifiers is to "ensure [ ] constant gain of the amplifier during quick change in the power level of the DWDM signal" (Trial Tr. at 1102:17-1104-18; see also Fujitsu Ex.2012 at 2012-14 (Fig.4) & 2012-28 (Section 5.10.2)).

While Fujitsu Limited's cross examination of Dr. Buckman's testimony may have been damaging, deciding what weight to give Dr. Buckman's testimony is a task for the jury. See E.E.O.C. v. Mgmt. Hospitality of Racine, Inc., 666 F.3d 422 (7th Cir.2012) ("Credibility determinations, the weighing of the evidence, and the drawing of legitimate inferences from the facts are within the province of the jury.") (quoting Bogan v. City of Chicago, 644 F.3d 563, 572 (7th Cir.2011)). This court may not, and will not, substitute its own assessment of Dr. Buckman's testimony in place of the jury's.

*6 The court also rejects Fujitsu Limited's argument that Dr. Buckman's testimony was impermissibly based on "unusual conditions." (Fujitsu's JMOL at 15 (citing Hilgraeve Corp. v. Symantec Corp., 265 F.3d 1336, 1343 (Fed.Cir.2001)).) Dr. Buckman's opinion was based on an anticipated "fiber cut event" specifically addressed in Tellabs' specifications, and was in that sense clearly "relevant to the infringement analysis" regarding the MIAM module product's standard operation under those anticipated conditions. Hilgraeve Corp., 265 F.3d at 1343.

Fujitsu Limited further relies on Dr. Ghera's testimony that the RED-C optical gain block component was designed to react "fast enough" to "keep the gain constant" during a change in the number of channels, (Fujitsu's JMOL, Ex. 2 ("Ghera Dep. Tr.") at 162:1-17), arguing that this "uncontroverted factual testimony" demonstrates that the MIAM module product actually keeps the gain constant during a change in the number of channels. (Fujitsu's JMOL at 19.) A reasonable jury, however, could have rejected Fujitsu Limited's interpretation of Dr. Ghera's testimony in favor of Dr. Buckman's interpretation of Dr. Ghera's testimony—that Dr. Ghera was addressing "the speed with which the controller corrects the gain when something happens, such as a change in the number of channels which wants to take it out of its range where it's supposed to be constant." (Trial Tr. at 1152:2-7 (emphasis added).)

The court need not address Fujitsu Limited's additional arguments regarding Tellabs' alternative theories of non-infringement. Based on Dr. Buckman's testimony as to the ± 0.8 dB maximum excursion in the gain during a change in the number of channels, the court finds that a legally sufficient evidentiary basis was presented at the trial for a reasonable jury to conclude that Tellabs' MIAM module product does not include "a controller which controls the gain to be approximately constant" during a change in the number of channels, as required by independent Claim 6 and dependent Claims 7 and 8. Fujitsu Limited's renewed motion for judgment as a matter of law is therefore denied.

Fujitsu Limited argues, in the alternative, for a new trial on the issue of infringement. (Fujitsu's JMOL at 25.) This request for a new trial is denied. As discussed above, Tellabs introduced evidence at trail that, in response to a change in the number of channels, the gain supplied by the MIAM module product would deviate from the desired value, resulting in a ± 0.8 dB "maximum excursion" in the gain before the control systems of the MIAM module product regulated the gain to the desired steady state value. This ± 0.8 dB excursion directly relates to the patent element requiring that a controller control the gain to be approximately constant. A rational jury could have, in light of this evidence and the other evidence presented at trial, determined that the MIAM module product did not maintain an approximately constant gain as required in Claims 6, 7, and 8 of the '681 Patent. The jury's determination is not against the manifest weight of the evidence, and Fujitsu Limited's request for a new trial is denied.

2. Tellabs' Motion for Judgment as a Matter of Law

*7 The court also rejects Tellabs' contention that a judgment of invalidity is required as a matter of law for Claims 6, 7, and 8 of the '681 Patent. As noted above, Tellabs argued to the jury that the '681 Patent is anticipated by the '092 Patent. In support of its anticipation argument, in relevant part, Tellabs introduced evidence that the '092 Patent inherently disclosed a variable channel count environment, as required by Claims 6, 7, and 8 of the ` 681 Patent. (See Claim 6 ('681 Patent, col. 22:36-39) (describing "an optical amplifier . . . having a variable number of channels associated with different wavelengths [the number of channels can change and each channel is associated with a different wavelength]") (as modified by 9/29/2011 claim construction).) Specifically, Dr. Buckman testified, "[I]t's my opinion based on common sense that the number of channels in a [wavelength division multiplexed] optical system is going to inherently vary," because the "laser source [s] somewhere in the system . . . eventually and randomly, probably unexpected, are going to die. They're going to quit operating and when they do that, that channel's gone. The number of channels has changed." (Trial Tr. at 880:19-881:14.) Dr. Buckman further testified that a person of ordinary skill in the art, as defined by the court, would understand that any component is "eventually going to fail. . . and, in the case of a laser, stop producing the light it's supposed to produce which would cause the number of channels on a particular communications line to change when that happens." (Trial Tr. at 882:20-883:2.) Through Dr. Buckman, Tellabs also introduced statements made by PTO examiner Deandra Hughes during the prosecution of a patent related to the ` 681 Patent, in which Hughes stated in an official Office Action that with respect to the '092 Patent "the number of channels is inherently variable because channels are inherently dropped." (DX-025-3; see generally Trail Tr. 918:19-923:21.) Based on this evidence, Tellabs argues it proved at trial that "a person of ordinary skill in the art would have known that an optical fiber transmission system inherently adds and drops wavelength channels from the wavelength division multiplexed (WDM) optical signal at a node in the system." (See Dkt. No. 566 ("Tellabs' JMOL") at 5

In response, Fujitsu Limited argues that the trial testimony of Mr. Sugaya, Dr. Willner, and Dr. Buckman suggests "a consensus . . . that the optical amplifier disclosed in the '092 Patent . . . cannot work in a variable channel count environment." (Dkt. No. 568 ("Fujitsu's Resp.") at 21.) As an inventor of both the '681 Patent and the '092 Patent, Mr. Sugaya testified that the optical amplifier disclosed in the '092 Patent "operates in an environment in which the number of channels doesn't change." (Trial Tr. at 613:17-20.) Mr. Sugaya further testified that if the number of channels were to change, "the amount of power per channel drops [with respect to the optical amplifier disclosed in the '092 Patent] . . . mean[ing] that the quality of communications will be degraded, and so problems like not being able to communicate will occur." (Trial Tr. at 628:23-629:3 (referring to Fujitsu Illustrative Ex. 2614).) Specifically, Mr. Sugaya testified that in a changing channel count environment, the attenuator in the '092 Patent changes, causing "the amplifier overall gain to change." (Trial Tr. at 625:8-11; 629:25-630:3.) Mr. Sugaya testified that the invention disclosed in the '681 Patent was designed to address these concerns. (Trial Tr. at 630:1-4.) Similarly, Dr. Willner testified that "[a] fixed-channel count amplifier, such as the '092 patent, would erroneously change the gain, adjust the attenuation of the variable optical attenuator when the number of channels is changing." (Trial Tr. at 1219:13-21.) On cross examination, Dr. Buckman testified that there was "[n]o explicit disclosure of variable channel count" in the '092 Patent, and he agreed with counsel's statement that the '092 Patent was "not designed to differentiate for input power fluctuations caused by changes in channel count." (Trial Tr. at 1123:21-23; 1129:19-25.) Dr. Buckman further testified that "[t]he gain across the entire amplifier in the '092 Patent will change when the number of channels changes." (Trial Tr. at 1167:4-9.)

*8 As stated earlier in this memorandum opinion, it is not for the court in ruling on post-trial motions to resolve conflicts in trial testimony or weigh the evidence. In accordance with Rule 50(a), the court finds that a reasonable jury considering the testimony of Mr. Sugaya, Dr. Willner, and Dr. Buckman had a legally sufficient evidentiary basis to conclude that the '092 Patent did not anticipate the asserted claims of the '681 Patent, because the ` 092 Patent did not disclose an optical amplifier "having a variable number of channels associated with different wavelengths," including a component that "controls the gain to be approximately constant," as required by the asserted claims of the '681 Patent. In light of this finding, the court need not address Tellabs' additional arguments regarding anticipation by the ` 092 Patent.

Finally, the court addresses Tellabs' request for judgment that the '681 Patent is invalid as a matter of law due to obviousness. As presented at trial, Tellabs' obviousness argument focused on the combination of the July 1995 Sugaya Article and the ` 874 Patent. Specifically, as summarized in Tellabs' pending motion, Tellabs took the position that "[e]very element of [the asserted claims], other than the optical filter which makes the gain substantially even with respect to said different wavelengths, can be found in the July 1995 Sugaya Article" and that "one of skill in the art would have been motivated to employ the gain-flattening filter from the '874 Patent with the July 1995 Sugaya Article in order to achieve a gain that is flat with respect to wavelength." (Tellabs' JMOL at 21, 30.)

As with the '092 Patent, the court's analysis of Tellabs' argument focuses on whether the July 1995 Sugaya Article disclosed an optical amplifier "having a variable number of channels associated with different wavelengths," including a component that "controls the gain to be approximately constant," as required by the asserted claims of the '681 Patent. At trial, Tellabs primarily relied on three pieces of evidence to demonstrate that the optical amplifier described in the July 1995 Sugaya Article controls the gain to be approximately constant in a changing channel count environment. First, Dr. Buckman identified Figures 1 and 10 from the July 1995 Sugaya Article as "two different figures showing [a] different number of channels." (Trial Tr. at 940:17-18; see generally 940:7-942:22; see also DX-031 at TLIL 0003234 and TLIL 0003238 (English: TLIL 0003241 and TLIL 0003253).) In this context, Dr. Buckman further noted the authors' statement that the optical amplifier disclosed in the July 1995 Sugaya Article "can deal with input changes" by "optimizing the amplification conditions for the sixteen (16) wave amplification . . . same as the four (4) wave amplification." (DX-031 at TLIL 0003238 (English: TLIL_0003253); see also Trial Tr. at 942:19-22.) Second, Tellabs introduced Section 3.1 of the July 1995 Sugaya Article, which refers to the optical amplifier being "used for a WDM network that includes optical cross connect (OXC) systems." (DX-031 at TLIL 0003236 (English: TLIL 0003245)). Dr. Buckman testified that "[o]ne purpose of an optical cross-connect system is to switch channels in and out of a particular optical fiber link, to change the number of channels." (Trial Tr. at 947:16-20.) Similarly, Mr. Sugaya testified that an optical cross-connect system is used "for switching the optical path of light," and Mr. Sugaya agreed with counsel that the use of an optical cross-connect system "can result in adding or dropping channels." (Trial Tr. at 741:3-11.) Finally, Dr. Buckman testified that the number of channels in the optical amplifier disclosed by the July 1995 Sugaya Article could vary, because "the lasers which supply these different wavelengths . . . can die at any time and then you've got a change in the number of channels." (Trial Tr. at 943:21-944:3.)

*9 Fujitsu Limited takes the position that a reasonable jury could have concluded from the evidence at trial that the July 1995 Sugaya Article did not disclose an optical amplifier that controls the gain to be approximately constant in a changing channel count environment. (See Fujitsu's Resp. at 29 ("[I]n the face of a varying number of channels, the controller disclosed in the July 1995 Sugaya Article suffers from the same shortcomings as does the ` 092 Patent."); see also id. at 33 ("the consensus among the witnesses [was] that the controller in the July 1995 Sugaya Article changed the gain rather than kept the gain constant with respect to a varying number of channels").) As with the ` 092 Patent, Mr. Sugaya testified that the optical amplifier disclosed in the July 1995 Sugaya Article was "directed at a fixed number of channels" (Trial Tr. at 731:20-21) and Dr. Willner testified that the optical amplifier disclosed in the July 1995 Sugaya Article could be described as "[a] fixed-channel count amplifier" (Trial Tr. at 1210:12-14). Dr. Willner further opined that "[w]hen the number of channels changes, [the amplifier disclosed in the July 1995 Sugaya Article] would—erroneously would make a mistake and it would change the gain." (Trial Tr. at 1210:18-20; see also Trial Tr. at 1217:1-3 ("These amplifiers in the July 1995 article as well as the ` 092 patent, if there is a change in the number of channels, it will change the gain erroneously.").) Likewise, in response to a question regarding the optical amplifier disclosed in the July 1995 Sugaya Article, Mr. Sugaya testified that "[w]hen the environment is one of which the number of channels changes, the gain changes." (Trial Tr. at 739:12-13.) Dr. Buckman testified that the optical amplifier disclosed in the July 1995 Sugaya Article did not include circuitry that would keep the gain across the entire optical amplifier constant if there was a change in the channel count. (Trial Tr. at 1168:10-16 ("Q: . . . there is no circuitry in the Sugaya July 1995 reference which allows the gain across the entire optical amplifier to remain constant if there's a change in channel count, is there? A: . . . There's not circuitry provided that will keep that particular overall gain constant.").)

In response to Tellabs' reliance on Figures 1 and 10 of the July 1995 Sugaya Article, Fujitsu Limited notes Dr. Buckman's concession that "[tjhere was no attempt made in the Sugaya reference July 1995 marked as Exhibit DX 31 to operate this system in an environment where channel counts actually changed while the operational—while the amplifier was operating" and Dr. Buckman's understanding that the authors instead physically "changed filters in order to have one which would accommodate this wider range of wavelengths corresponding to the use of 16 channels." (Trial Tr. at 1128:22-1129:1; 1128:13-16.) In response to Tellabs' reliance on Section 3.1's reference to optical cross connect systems, Fujitsu Limited notes that Mr. Sugaya, Dr. Willner, and Dr. Buckman all testified that optical cross connect systems do not necessarily indicate a change in the overall channel count. (See Trial Tr. at 741:3-7 (Sugaya) (an optical cross connect system is "for switching the optical path of light"); Trial Tr. at 1214:7-8 (Willner) ("although an [optical cross connect] might change the number of channels, many times it doesn't"); Trial Tr. at 1169:1-3 (Buckman) ("Q. Isn't it true that cross-connects can be used to switch signals rather than drop or add them? A. They can be used for both.").)

*10 After considering the testimony and evidence presented at trial, a reasonable jury could have concluded that the July 1995 Sugaya Article did not disclose an optical amplifier "having a variable number of channels associated with different wavelengths," including a component that "controls the gain to be approximately constant," as required by the asserted claims of the '681 Patent. Because Tellabs does not argue that this missing claim element is supplied by either the '874 Patent or by the general knowledge of a person of ordinary skill in the art, a reasonable jury could have concluded that Tellabs did not meet its burden of establishing by clear and convincing evidence that the July 1995 Sugaya Article and the '874 Patent in combination rendered the asserted claims of the '681 Patent obvious.

CONCLUSION

For the reasons set forth above, "Fujitsu's Renewed Motion for Judgment as a Matter of Law that Tellabs Infringes Claims 6, 7, and 8 of U.S. Patent No. 7,228,681, Notwithstanding the Jury Verdict of Non-Infringement; or, Alternatively Motion for a New Trial" (Case No. 09 C 4530, Dkt. No. 962) and "Tellabs, Inc.'s, Tellabs Operations, Inc.'s, and Tellabs North America, Inc.'s Renewed Motion for Judgment as a Matter of Law that U.S. Patent No. 7,227,681 Is Invalid" (Case No. 08 C 3379, Dkt. No. 566) are both denied in their entirety.

Tellabs' original "Motion for Judgment as a Matter of Law that U .S. Patent No. 7,227,681 Is Invalid" (Case No. 08 C 3379, Dkt. No. 557) and Tellabs'"Motion for Judgment as a Matter of Law Based on Fujitsu Limited's Failure to Prove Infringement of Claims 6-8" (Case No. 08 C 3379, Dkt. Nos. 547, 552, 555 (renewed)) are denied as moot.

Joan M. Cresap, Trager, Cronin & Byczek, LLP, Lake Success, New York, for Plaintiff.

Lois M. Traub, Hitsman, Hoffman & O'Reilly Elmsford, New York, for Defendant.

OPINION AND ORDER

SCHEINDLIN, J.

*1 On August 17, 1999, plaintiff in this Title VII sexual harassment case moved, pursuant to Federal Rule of Civil Procedure 59, for a new trial based on alleged errors in the jury charge and verdict form. Plaintiff also moved, pursuant to Federal Rule of Civil Procedure 50(b), for judgment as a matter of law on the issue of whether Joel B. Lieberman, the alleged harasser, was plaintiffs supervisor.

For the reasons set forth below, plaintiffs motion for a new trial is granted. However, plaintiffs motion for judgment as a matter of law is denied.

I. Background

This case involves a sexual harassment charge brought by plaintiff Olive DeWitt against defendant the New York State Housing Finance Agency ("NYSHFA"). Plaintiff alleges that she was sexually harassed by NYSHFA staff attorney Lieberman during the two weeks she worked at NYSHFA as a temporary legal secretary.

A jury trial was held from August 2 to August 6, 1999. On August 6, after approximately three hours of deliberation, the jury returned a verdict for defendant. In response to questions posed in a special verdict form, the jury found: (1) NYSHFA staff attorney Lieberman was not plaintiffs supervisor; (2) plaintiff did not suffer from quid pro quo or hostile work environment sexual harassment; (3) defendant provided a reasonable avenue of complaint; and (4) defendant did not ignore any known allegations of harassment. Judgment was entered for defendant on August 17, 1999.

II. Discussion

A. Rule 59 Motion For New Trial

Rule 59 provides that "[a] new trial may be granted. . . 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." Fed.R.Civ.P. 59(a). New trials have generally been granted where "the verdict is against the weight of the evidence, damages are excessive, the verdict is inconsistent, substantial errors were made in admitting or excluding evidence, or in charging the jury, or because a material issue was improperly submitted or withdrawn from a jury." Hardy v. Saliva Diagnostic Sys., Inc., 94 Civ. 1142, 1999 WL 382474, at *5 (D.Conn. March 17, 1999). In evaluating a Rule 59 motion, the trial judge's duty "`is essentially to see that there is no miscarriage of justice."` Sharkey v. Lasmo (AUL Ltd.), 94 Civ. 4699, 1999 WL 476850, at *2 (S.D.N.Y. July 7, 1999) (quoting Bevevino v. Saydjari, 574 F.2d 676, 684 (2d Cir. 1978)). A "miscarriage of justice" has occurred if the jury's verdict is against the weight of the evidence or "the trial was not fair to the moving party." Mollis v. Bankers Trust Co., Ill F.2d 683, 691 (2d Cir. 1983).FN1

In support of her motion for a new trial pursuant to Rule 59, plaintiff points to four alleged errors in the jury instructions and special verdict form. As defendant correctly notes in its opposition to plaintiffs post-trial motions, plaintiff did not object to those errors during trial. See Defendant's Memorandum of Law in Opposition to Plaintiffs Post Trial Motions ("Def.Mem.") at 4-5; see also DeWitt Trial Transcript ("DeWitt Tr.") at 729, 739-45.FN2 As a result of plaintiffs failure to object during the trial, a new trial can only be granted if the alleged mistakes constitute "plain error." See Hardy, 1999 WL 382474, at 5 ("unless there is `plain error,' failure to object to an issue during trial precludes review of that issue on a motion for a new trial") (citing Schaafsma v. Morin Vt. Corp., 802 F.2d 629, 636 (2d Cir. 1986)). Accordingly, I review the alleged mistakes for plain error.FN3

1. Question 6: Hostile Work Environment Harassment

*2 Question 6 of the special verdict form submitted to the jury listed four types of conduct that constitute hostile work environment sexual harassment and asked whether plaintiff had proven the existence of such conduct in the instant case. The question read as follows:

Plaintiff argues that the use of "and" rather than "or" in the last line of Question 6 improperly led the jury to read Question 6 in the conjunctive. I agree.

The plain meaning of Question 6, as set forth above and as submitted to the jury, is that to prove her case, plaintiff was required to show, by a preponderance of the evidence, that she had suffered from conduct consisting of sexual proposition, sexual innuendo, unwelcome touching, and sexually explicit activity. In other words, the only way the jury could have answered "Yes" to Question 6—and "Yes" to a finding of hostile work environment sexual harassment—was to find that plaintiff had proven all four types of conduct. To require such a finding, however, is clearly contrary to sexual harassment law, because proof of any one of the four types of conduct listed in Question 6 is enough, in and of itself, to support a claim for hostile work environment harassment. See Richardson v. New York State Dep't of Correctional Serv., 98 Civ. 7110, 1999 WL 391551, at 6 (2d Cir. June 16, 1999) (even a single episode of harassment can establish hostile work environment harassment); Leopold v. Baccarat, Inc., 174 F.3d 261, 268-69 (2d Cir. 1999) (sexual comments are sufficient to create a hostile work environment). Accordingly, Question 6 should have asked the jurors whether plaintiff had proven her case by demonstrating conduct consisting of "sexual proposition, sexual innuendo, unwelcome touching and/or sexually explicit behavior." See Revised Verdict Sheet at Question 6 (attached).

Defendant concedes that Question 6 as submitted to the jury was incorrect but argues that the error was harmless because the Court correctly stated the law regarding hostile work environment harassment in its instructions to the jury. Def. Mem. 8-9. I find defendant's argument unpersuasive. Regardless of whether the Court properly instructed the jurors on hostile work environment harassment prior to deliberations, the verdict sheet that the jurors used to guide their discussions and to ultimately determine their verdict incorrectly stated the standard for a finding of hostile work environment harassment. Not only is it highly unlikely that the jurors would have remembered or referred to the Court's prior instructions rather than the verdict sheet, the verdict sheet would have made it impossible for the jurors to follow those instructions in any event because Question 6 did not permit the jurors to find hostile work environment harassment absent proof of four types of sexual misconduct. As a result, I find that the use of "and" rather than "and/or" in Question 6 constitutes plain error because it is both an obvious misapplication of the law and prejudicial to plaintiff.FN4

2. Co-Worker Liability

*3 In its initial charge to the jury, this Court gave no instructions regarding employer liability for coworker—as opposed to supervisor—sexual harassment. During deliberations, the Court received a note from the jury that raised an issue as to what might happen if the jury determined NYSHFA staff attorney Lieberman was not plaintiffs supervisor. In response to the jurors' note, the Court asked the jurors to add two additional questions, 14(a) and 14(b), to their verdict sheets. Question 14(a) asked: "Do you find that the employer provided no reasonable avenue for complaint?" Question 14(b) asked: "Do you find that the employer knew of the harassment but did nothing about it?" The Court gave the jurors a supplemental charge instructing them that defendant could be liable for co-worker harassment based on their answers to the two newly added questions.

Plaintiff contends that the Court's instruction regarding co-worker liability and the two questions the Court added to the jury form regarding co-worker liability were inadequate. Again, I agree.

Employer liability for co-worker harassment is determined by a negligence standard. In order for an employer to be held liable for an employee's harassment of a co-worker, a plaintiff must show: (1) that the employer provided no reasonable avenue for complaint; or (2) that the employer knew of the harassment but failed to take immediate and appropriate remedial action. See Richardson, 1999 WL 391551, at * 10-11.

In its supplemental jury charge regarding employer liability for co-worker harassment, the Court stated: "[T]he employer will not be liable for a co-worker's sexual harassment unless one of the following is true—the employer provided no reasonable avenue for complaint or the employer knew of the harassment but did nothing about it." DeWitt Tr. at 862. This instruction was plainly inadequate because it directed the jurors to determine whether defendant responded to plaintiffs allegations of harassment; it did not direct the jurors to determine whether defendant's response was "immediate and appropriate" as required under Richardson. Similarly, Questions 14(a) and (b) addressed whether defendant provided a reasonable avenue for complaint and, if so, whether defendant responded to plaintiffs known allegations of harassment. However, these questions simply did not address—as they must under the law—whether any action that defendant did take was "immediate and appropriate."

Defendant argues that the Court's failure to include Question 14(c) was harmless error, because the jury responded negatively to Questions (a) and (b) and thus would not have reached Question 14(c). Defendant is wrong. Although the jury found that defendant did not fail to provide a reasonable avenue for complaint ("No" to Question 14(a)) and that defendant did not fail to act with respect to allegations of sexual harassment that plaintiff reported ("No" to Question 14(b)), the jury never found that the action defendant did take was "immediate and appropriate". Thus, contrary to defendant's assertion, a jury could find that an employer provided a reasonable avenue for complaint and that the employer responded to known allegations of harassment but that the employer's response was ultimately inadequate to shield it from liability because it was not "immediate and appropriate". For this reason, I find that the Court's instructions and questions regarding coworker harassment were plain error.

*4 The plain error in Question 6 together with the plain error in both the jury instructions and verdict sheet regarding co-worker harassment misstated the law and deprived plaintiff of a fair trial. Accordingly, plaintiffs motion for a new trial pursuant to Rule 59 is granted.FN5

B. Rule 50 Motion For Judgment As a Matter of Law Plaintiff has also moved pursuant to Rule 50(b) for judgment as a matter of law on the issue of whether NYSHFA staff attorney Lieberman was plaintiffs supervisor. However, a party cannot seek judgment as a matter of law pursuant to Rule 50(b) post-verdict unless she moved for judgment as a matter of law pursuant to Rule 50(a) during trial and before the case was sent to the jury. See, e.g., Pittman v. Grayson, 149 F.3d 111. 119 (2d Cir. 1999); Fed.R.Civ.P. 50(b) ("If, for any reason, the Court does not grant a motion for judgment as a matter of law made at the close of all the evidence . . . . [t]he movant may renew its request for judgment as a matter of law by filing a motion no later than 10 days after entry of judgment." (emphasis added)). Here, plaintiff failed to move for judgment as a matter of law on the supervisor issue during trial. Therefore, plaintiff cannot seek post-trial relief on this issue and plaintiffs motion for judgment as a matter of law is denied.FN6

III. Conclusion

For the foregoing reasons, plaintiffs motion for a new trial is granted and plaintiffs motion for judgment as a matter of law with respect to the issue of Lieberman's supervisor status is denied.

Thus, it is HEREBY ORDERED that the verdict in favor of defendant returned on August 6, 1999 and entered on August 17, 1999, be set aside and a new trial granted. The new trial is scheduled to commence on Monday, September 21, 1999 at 10:00 a.m.

SPECIAL VERDICT FORM

1) Do you find that Plaintiff has proven, by a preponderance of the evidence, that Joel B. Lieberman was Plaintiffs supervisor at the New York State Housing Finance Agency?

[If Yes, please go on to Question 2, if No, please go to Question 6]

Quid Pro Quo Sexual Harassment

2) Do you find by a preponderance of the evidence that Joel B. Lieberman made sexual advances to the Plaintiff?

[If Yes, please go on to Question 3, if No please go to Question 6]

[If Yes, please go on to Question 4, if No please go to Question 6]

*5 [If Yes, please go on to Question 5, if No please go to Question 6]

[Please go on to Question 6]

Hostile Environment Sexual Harassment

[If Yes, please go on to Question 7]

[If No, and No to Questions 1 or 2-5, please sign the verdict form]

[If No, and Yes to Questions 1-5, please go to Question 15]

[Please go on to Question 8]

[Please go on to Question 9]

[Please go on to Question 10]

[If Yes, please go onto Question 11]

[If No, and No to Questions 1 or 2-5, please sign the verdict form]

[If No. and Yes to Questions 1-5, please go to Question 15]

Affirmative Defense

[Please go on to Question 12]

[Please go onto Question 13]

*6 [If No to Question 1 but Yes to Questions 6-10, please go on to Question 14]

Co-Worker Harassment

14) a. Do you find that Defendant provided no reasonable avenue for complaint?

Damages

Background: Patentee filed action against competitor alleging that manufacture and marketing of generic version of conjugated estrogen tablets infringed patent. The United States District Court for the Southern District of New York, Leonard B. Sand, Senior District Judge, 715 F.Supp.2d 552, granted summary judgment of noninfringement. Patentee appealed.

Holdings: The Court of Appeals, Lourie, Circuit Judge, held that:

(1) presumption of prosecution history estoppel applied;

(2) polyvinyl alcohol (PVA) moisture barrier coating (MBC) to inhibit absorption of moisture and reduce storage-related degradation of conjugated estrogen tablets need only have been known in field of pharmaceutical compositions as of time of patentee's narrowing amendment for prosecution history estoppel to apply; and

(3) international patent application rendered use of PVA as MBC foreseeable.

Affirmed.

West Headnotes

[1] Patents 291 1565

291 Patents

291VII Patent Infringement

291VII(A) In General

291k1562 Patents for Processes and

Methods

291k1565 k. Substitution of equivalents. Most Cited Cases (Formerly 291k230)

Patents 291 1574(1)

291 Patents

291VII Patent Infringement

291VII(A) In General

291k1568 Patents for Machines, Products, or Devices

291k1574 Substitution of Equivalents 291k1574(1) k. In general. Most

Cited Cases

(Formerly 291k237)

Under the doctrine of the equivalents, a product or process that does not literally infringe the express terms of a patent claim nonetheless may be found to infringe if there is equivalence between the elements of the accused product or process and the claimed elements of the patented invention.

[2] Patents 291 1574(5)

291 Patents

291VII Patent Infringement

291VII(A) In General

291k1568 Patents for Machines, Products, or Devices

291k1574 Substitution of Equivalents

291k1574(5) k. Prosecution history estoppel as limiting range of equivalents. Most Cited Cases

(Formerly 291kl68(2.1))

Doctrine of prosecution history estoppel prevents a patent owner from recapturing through the doctrine of equivalents subject matter surrendered to acquire the patent.

[3] Patents 291 1819

291 Patents

291VII Patent Infringement

291VII(C) Actions

291VII(C)3 Evidence

291kl812 Presumptions and Burden of

Proof

291kl819 k. Laches and estoppel.

Most Cited Cases

(Formerly 291k312(1.6))

Presumption of prosecution history estoppel applied to patent infringement claim under equivalents doctrine, where amendment during prosecution narrowed scope of patent's claims in response to prior art rejection.

[4] Patents 291 1338(10)

291 Patents

291V Construction and Operation of Patents

291V(A) In General

291kl335 Accompanying Documents and Proceedings in Patent and Trademark Office

291kl338 Rejection and Amendment of Claims; Prosecution History

291kl338(10) k. Particular patents and claims. Most Cited Cases

(Formerly 291kl68(3))

Polyvinyl alcohol (PVA) moisture barrier coating (MBC) to inhibit absorption of moisture and reduce storage-related degradation of conjugated estrogen tablets need only have been known in field of pharmaceutical compositions as of time of patentee's narrowing amendment for prosecution history estoppel to apply to infringement claim under equivalents doctrine that PVA met "moisture barrier coating comprising ethylcellulose" limitation of asserted claims.

[5] Patents 291 1819

291 Patents

291VII Patent Infringement

291VII(C) Actions

291VII(C)3 Evidence

291kl812 Presumptions and Burden of

Proof

291kl819 k. Laches and estoppel.

Most Cited Cases

(Formerly 291k312(1.6))

The presumption of prosecution history estoppel may rebutted by showing, inter alia, that the alleged equivalent would have been unforeseeable at the time of the amendment and thus beyond a fair interpretation of what was surrendered.

[6] Patents 291 1338(2)

291 Patents

291V Construction and Operation of Patents

291V(A) In General

291kl335 Accompanying Documents and Proceedings in Patent and Trademark Office

291kl338 Rejection and Amendment of Claims; Prosecution History

291kl338(2) k. Estoppel in general; prosecution history estoppel. Most Cited Cases

(Formerly 291kl68(2.1))

On a claim of patent prosecution history estoppel, an alternative is foreseeable if it is disclosed in the pertinent prior art in the field of the invention; in other words, an alternative is foreseeable if it is known in the field of the invention as reflected in the claim scope before amendment.

[7] Patents 291 1848

291 Patents

291VII Patent Infringement

291VII(C) Actions

291VII(C)4 Trial, Hearing, and Determination

291kl848 k. Questions of law or fact.

Most Cited Cases

(Formerly 291k314(5))

On a claim of patent prosecution history estoppel, foreseeability of an alternative is a question of law based on underlying issues of fact.

[8] Patents 291 1338(10)

291 Patents

291V Construction and Operation of Patents

291V(A) In General

291k1335 Accompanying Documents and Proceedings in Patent and Trademark Office

291kl338 Rejection and Amendment of Claims; Prosecution History

291kl338(10) k. Particular patents and claims. Most Cited Cases

(Formerly 291kl68(2.1))

When the language of both original and issued claims begins with the words "[a] pharmaceutical composition," that language defines the field of the invention for purposes of determining foreseeability on a claim of prosecution history estoppel.

[9] Patents 291 1338(10)

291 Patents

291V Construction and Operation of Patents

291V(A) In General

291kl335 Accompanying Documents and Proceedings in Patent and Trademark Office

291kl338 Rejection and Amendment of Claims; Prosecution History

291kl338(10) k. Particular patents and claims. Most Cited Cases

(Formerly 291kl68(3))

International patent application published more than two years before amendment of conjugated estrogen tablet patent was prior art and rendered use of polyvinyl alcohol (PVA) as moisture-barrier coating (MBC) foreseeable under prosecution history estoppel doctrine, in determining whether patentee's amendment surrendered territory between original application claims and amended claim limitation including ethylcellulose as component of moisture barrier; even if disclosure had indicated that PVA was less than ideal in some pharmaceutical uses as MBC, it still had been disclosed to be useful as such, and that rendered it foreseeable.

[10] Patents 291 1574(5)

291 Patents

291VII Patent Infringement

291VII(A) In General

291k1568 Patents for Machines, Products, or Devices

291k1574 Substitution of Equivalents

291k1574(5) k. Prosecution history estoppel as limiting range of equivalents. Most Cited Cases

(Formerly 291kl68(2.1))

Foreseeability of an alternative does not require precise evidence of suitability or flawless perfection to create a prosecution history estoppel to a claim of patent infringement under the equivalents doctrine.

[11] Patents 291 1338(10)

291 Patents

291V Construction and Operation of Patents

291V(A) In General

291kl335 Accompanying Documents and Proceedings in Patent and Trademark Office

291kl338 Rejection and Amendment of Claims; Prosecution History

291kl338(10) k. Particular patents and claims. Most Cited Cases

(Formerly 291kl68(2.1))

Article published in scientific journal three years before amendment to patent claim was publicly available for purpose of a claim of prosecution history estoppel.

Patents 291 2091

291 Patents

29IX Patents Enumerated

291k2091 k. In general; utility. Most Cited

Cases

(Formerly 291k328(2))

US Patent 3,935,326. Cited as Prior Art.

Patents 291 2091

291 Patents

29IX Patents Enumerated

291k2091 k. In general; utility. Most Cited

Cases

(Formerly 291k328(2))

US Patent 5,908,638. Not Infringed.

*1377 Charanjit Brahma, Kirkland & Ellis, LLP, of Washington, DC, argued for plaintiff-appellant. With him on the brief were Corey J. Manley and J. John Lee; and Alexander F. Mackinnon, of Los Angeles, CA. Of counsel was Robert G. Krupka, of Los Angeles, CA.

*1378 Edgar H. Haug, Frommer Lawrence & Haug, LLP, of New York, NY, argued for defendant-appellee. With him on the brief was David A. Zwally.

Before LOURIE, GAJARSA, and DYK, Circuit Judges.

LOURIE, Circuit Judge.

Duramed Pharmaceuticals, Inc. ("Duramed") appeals from the decision of the United States District Court for the Southern District of New York granting summary judgment of noninfringement to Paddock Laboratories, Inc. ("Paddock"). Duramed Pharms., Inc. v. Paddock Labs., Inc., 715 F.Supp.2d 552 (S.D.N.Y.2010). Because the district court did not err in holding that prosecution history estoppel bars Duramed's allegations of infringement under the doctrine of equivalents, we affirm.

BACKGROUND

Duramed owns U.S. Patent 5,908,638 ("'638 patent"), which claims conjugated estrogen pharmaceutical compositions for use in hormone replacement therapies. The claimed conjugated estrogens are extremely water sensitive and thus highly susceptible to moisture degradation during storage. See '638 patent col.611.46-56. Accordingly, Duramed developed a formulation for conjugated estrogens that includes a moisture barrier coating ("MBC") to inhibit the absorption of moisture and reduce storage-related degradation. See id. col.611.36-45.

Duramed filed a patent application on its formulation on July 26, 1995. Original independent claim 1 recited a conjugated estrogen pharmaceutical composition "coated with a moisture barrier coating." J.A. 254. Original dependent claim 7 limited "said moisture barrier coating" to one that "comprises ethylcellulose." J.A. 255. The examiner rejected both claims as obvious, but during an interview advised that he would allow the application if Duramed amended claim 1 to include, inter alia, the limitations of claim 7. In a response received December 3, 1998, Duramed amended claim 1 to recite pharmaceutical compositions with "a moisture barrier coating comprising ethylcellulose." J.A. 304. Claim 1 of the issued '638 patent, the patent's only independent claim, accordingly reads as follows:

In March 2009, Duramed filed suit against Paddock under 35 U.S.C. § 271(e)(2), alleging infringement of the '638 patent based on Paddock's Abbreviated New Drug Application ("ANDA") for a generic version of Duramed's hormone replacement therapy product, Cenestin®. Duramed alleged infringement of claims 1, 4, and 6-8 under the doctrine of equivalents, because Paddock's proposed generic product uses a polyvinyl alcohol ("PVA") MBC, marketed as Opadry AMB. Paddock moved for summary judgment of noninfringement, arguing that Duramed was barred by amendment-based prosecution history estoppel from alleging that PVA *1379 met the "moisture barrier coating comprising ethylcellulose" limitation of the asserted claims.

In its motion for summary judgment, Paddock relied on several pre-amendment references, including an international patent application filed by Colorcon pursuant to the Patent Cooperation Treaty ("the Colorcon PCT"). The Colorcon PCT, published on January 25, 1996, discloses formulations of PVA-based MBCs, including Opadry AMB, but also, in a section entitled "Description of the Prior Art," notes several technical drawbacks of using PVA as an MBC. Paddock also relied on (1) U.S. Patent 3,935,326 ("the Groppenbacher patent"), which issued in 1976 and discloses the use of PVA in moisture-tight tablets; (2) an article in the December 1995 issue of "Manufacturing Chemist" that tests PVA MBCs and concludes that Opadry AMB is a highly effective moisture barrier formulation; (3) three scientific articles on PVA MBCs authored for distribution at scientific conferences in May 1995, May 1998, and November 1998; and (4) invoices indicating sales of Opadry AMB by Colorcon before September 1996.

The district court granted Paddock's motion for summary judgment of noninfringement, holding that prosecution history estoppel barred Duramed's infringement allegations. Duramed, 715 F.Supp.2d at 555-56. The district court first held that Duramed's amendment adding the ethylcellulose limitation was substantially related to patentability and narrowed the scope of the asserted claims, thus triggering the presumption under Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 344 F.3d 1359, 1366-67 (Fed.Cir.2003) (en banc) ("Festo IX"), that Duramed had surrendered all territory between the original and amended claim scope. Duramed, 715 F.Supp.2d at 559-60.

The district court then held that Duramed had failed to rebut the Festo presumption based on an argument of, inter alia, the unforeseeability of the use of PVA as an MBC in a pharmaceutical formulation. Id. at 560. Rather, the court held that PVA MBCs were foreseeable at the time of Duramed's narrowing amendment based on the Colorcon PCT's description of PVA as "a moisture barrier coating for pharmaceutical tablets and the like" and its disclosure of the Opadry AMB formulation used in Paddock's proposed generic product. Id. at 560-61. The court noted that several other facts reinforced this decision: (1) the pre-September 1996 invoices for the sale of Opadry AMB; and (2) the Groppenbacher patent, which teaches coating tablets with PVA to ensure "`moisture tightness]' and `insolubility] in the gastrointestinal tract.'"FN1 Id. at 561-62. Finally, the court rejected Duramed's argument that the Colorcon PCT's disclosure of PVA MBCs' technical drawbacks raised serious questions about PVA's effectiveness as an MBC, concluding that "even if the effectiveness of PVA was unknown in 1998, that would not mean that PVA MBCs were unforeseeable." Id. at 563.

Duramed timely appealed to this court. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

DISCUSSION

We review a district court's grant of summary judgment de novo, reapplying the same standard applied by the district *1380 court. Iovate Health Scis., Inc. v. Bio-Engineered Supplements & Nutrition, Inc., 586 F.3d 1376, 1380 (Fed.Cir.2009). Summary judgment is appropriate if there are no genuine issues of material fact and the moving party is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(c).

[2] Under the doctrine of the equivalents, "a product or process that does not literally infringe . . . the express terms of a patent claim may nonetheless be found to infringe if there is `equivalence' between the elements of the accused product or process and the claimed elements of the patented invention." Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 21, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997) (citing Graver Tank & Mfg. Co. v. LindeAir Prods. Co., 339 U.S. 605, 609, 70 S.Ct. 854, 94 L.Ed. 1097 (1950)). However, the doctrine of prosecution history estoppel prevents a patent owner from recapturing through the doctrine of equivalents subject matter surrendered to acquire the patent. See Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 734, 122 S.Ct. 1831, 152 L.Ed.2d 944 (2002) ("Festo VIII").

Because during prosecution Duramed narrowed the scope of the '638 patent's claims in response to a prior art rejection, a presumption of prosecution history estoppel applies. See Festo IX, 344 F.3d at 1366-67. Nonetheless, Duramed may rebut that presumption by showing, inter alia, the "alleged equivalent would have been `unforeseeable at the time of the amendment and thus beyond a fair interpretation of what was surrendered.'" Id. at 1369 (quoting Festo VIII, 535 U.S. at 738, 122 S.Ct. 1831). "[A]n alternative is foreseeable if it is disclosed in the pertinent prior art in the field of the invention. In other words, an alternative is foreseeable if it is known in the field of the invention as reflected in the claim scope before amendment." Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 493 F.3d 1368, 1379 (Fed.Cir.2007) ("Festo X"). Foreseeability is a question of law based on underlying issues of fact. Id. at 1375.

On appeal, Duramed argues that the district court applied the wrong legal test for foreseeability and thus held that any mention of an alleged equivalent in the prior art makes that equivalent foreseeable as a matter of law. But, according to Duramed, an equivalent is not foreseeable if it was not understood by one of ordinary skill in the art to be suitable for use in the invention as originally claimed. And, in this case, Duramed asserts, the relevant art did not disclose either PVA or Opadry AMB as suitable MBCs for moisture-sensitive pharmaceutical compounds, like conjugated estrogens.

Paddock responds that the district court applied the correct foreseeability standard, which requires only that PVA be foreseeable as an MBC for pharmaceutical applications at the time of Duramed's narrowing amendment. In this case, according to Paddock, the Colorcon PCT alone renders PVA MBCs foreseeable, but this conclusion is bolstered by Colorcon's commercialization of Opadry AMB, the Groppenbacher patent, and the other references not considered by the district court.

We agree with Paddock that Duramed failed to rebut the presumption of prosecution history estoppel based on unforeseeability. We first note that, to the extent that Duramed argues that foreseeability requires that PVA must have been known as an MBC for use with conjugated estrogens, we have previously rejected such a restrictive definition of the field of invention. See Schwarz Pharma, Inc. v. Paddock labs., Inc., 504 F.3d 1371, 1377 (Fed.Cir.2007). As we spelled out in Schwarz, when the language of both original and issued claims begins with the *1381 words "[a] pharmaceutical composition," that language defines the field of the invention for purposes of determining foreseeability. Id. Accordingly, PVA MBCs need only to have been known in the field of pharmaceutical compositions as of the time of Duramed's narrowing amendment, see Festo X, 493 F.3d at 1379, which we hold that the Colorcon PCT establishes as a matter of law.

The Colorcon PCT discloses PVA MBCs for use with pharmaceutical compositions: "A dry powder moisture barrier coating composition is made to form a moisture barrier film coating for pharmaceutical tablets and the like, which comprises polyvinyl alcohol. . . ." J.A. 4466. In the "Description of the Prior Art" the PCT states that "[t]he use of the polymer polyvinyl alcohol, PVA, as a moisture barrier coating has been previously suggested," but it also notes two drawbacks of PVA MBCs: stickiness and plasticizer compatibility. Id. Specifically, the Colorcon PCT states:

The Colorcon PCT then, in the "Summary of the Invention," discloses preferred PVA grades and identifies a plasticizer that does not compromise PVA's properties as a moisture barrier. The application states that "[e]xcellent moisture barrier properties are obtained when hot water soluble grades of PVA are used in the inventive coating," and that "[a] preferred grade of PVA for use in the inventive coating is a grade in the medium range . . . because the step of heating the water of the liquid coating dispersion may not be necessary, while still maintaining excellent moisture barrier properties in the inventive coating." J.A. 4468-69. The Colorcon PCT next discloses that soya lecithin "surprisingly, and unexpectedly, acts as a plasticizer by locking moisture in the coating so the coating stays flexible and not brittle," and thus soya lecithin as a plasticizer "does not compromise the moisture barrier properties of the overall coating." J.A. 4469. Finally, the Colorcon PCT lists a number of PVA MBC formulations, including Opadry AMB. Accordingly, the Colorcon PCT discloses PVA MBCs, including Opadry AMB, in the field of pharmaceutical compositions, rendering such PVA MBCs "known in the field of the invention," and thus foreseeable. Festo X, 493 F.3d at 1379.

Duramed argues that the Colorcon PCT's disclosure fails to establish that PVA-based Opadry AMB was suitable as an MBC because it provides only conclusory statements that the inventors had solved the technical drawbacks of PVA MBCs and lacks any data on the stability of the pharmaceutical compounds coated with Opadry AMB. We disagree; foreseeability does not require such precise evidence of suitability. See Honeywell Int'l, Inc. v. Hamilton Sundstrand Corp., 523 F.3d 1304, 1312-13 (Fed.Cir.2008). And even if the PCT disclosure indicates that PVA is less than ideal in some pharmaceutical uses as an MBC, it is still disclosed to be useful as such, and that renders it foreseeable for purposes of prosecution history estoppel. Foreseeability does not require flawless perfection to create an estoppel.

In rejecting a foreseeability rebuttal in Glaxo Wellcome, Inc. v. Impax Laboratories, Inc., 356 F.3d 1348 (Fed.Cir.2004), we held that "the record abundantly disclosed [the alleged equivalent's] use as a *1382 release agent at the relevant time," Smithkline Beecham Corp. v. Excel Pharms., Inc., 356 F.3d 1357, 1365 (Fed.Cir.2004) (describing Glaxo, 356 F.3d at 1355). Our holding relied on statements from several references disclosing the alleged equivalent's use as an extended-release agent in drug formulations; it did not rely on test data showing the alleged equivalent's precise characteristics or suitability as an extended-release agent, and thus did not rely on the type of evidence Duramed demands in this case. See Glaxo, 356 F.3d at 1355. Rather, the Colorcon PCT discloses the use of PVA as MBCs in the field of pharmaceutical compounds prior to December 3, 1998, rendering such PVA MBCs foreseeable at the time of Duramed's narrowing amendment.FN2

CONCLUSION

For the foregoing reasons, we affirm the district court's grant of summary judgment of noninfringement.

AFFIRMED.