ROBINSON, District Judge
Plaintiffs INVISTA North America S.à.r.l. ("Invista") and Auriga Polymers Inc.
In a memorandum opinion and order dated June 25, 2013, the court resolved several summary judgment motions.
Plastic polymers are commonly used for making food and beverage containers and
One type of polymer, polyester, has been widely used in the bottling industry for many years. Polyethylene terephthalate ("PET") is a common example of a polyester. (2:34, 8:16) Polyesters can be prepared by reacting diesters (e.g., dicarboxylic ester) or diacids (e.g., terephthalic acid) with ethylene glycol ("EG"). (3:27-31). Because of polyesters' inferior gas-barrier properties, these materials limit the shelf life of oxygen-sensitive foods, condiments, and beverages (such as juice, soda, or beer). (1:27-33)
In the prior art, it was known that the use of low-gas permeable polymers, known as partially aromatic polyamides (or "nylons"), with polyesters increases barrier properties. (1:31-38) Partially aromatic polyamides have non-scavenging, or "passive," barrier properties, meaning they restrict carbon dioxide leakage from, and oxygen intrusion into, a container by obstructing the paths of gas molecules. (1:21) However, partially aromatic polyamides are not miscible with polyesters like PET, and they also give containers an undesirable yellow and hazy appearance. (1:44-46)
It was commonly known in the art that combining a thin layer of a partially aromatic polyamide, like MXD6,
According to the patentee, no prior art disclosed a monolayer container with a desirable balance of high gas barrier properties and low yellowness and haze, as taught by the '159 and '216 patents. ('216 patent, 2:55-61, 2:65-3:13) The invention is useful as packaging for oxygen-sensitive foods that require a long shelf life. (2:55-67) The '216 patent discloses a three component composition. Claim 1 of the '216 patent recites:
Dependant claim 4 recites "[t]he composition of claim 1, wherein said cobalt salt is present in a range from about 20 to about 500 ppm of said composition."
The "copolyester comprising a metal sulfonic salt" is termed a "compatibilizer." A metal sulfonate salt discussed in the '216 patent is 5-sulfoisophthalic acid ("SIPA"). (8:41)
To prevail on a renewed motion for judgment as a matter of law following a
Federal Rule of Civil Procedure 59(a) provides, in pertinent part:
Fed. R. Civ. P. 59(a). The decision to grant or deny a new trial is within the sound discretion of the trial court and, unlike the standard for determining judgment as a matter of law, the court need not view the evidence in the light most favorable to the verdict winner. See Allied Chem. Corp. v. Daiflon, Inc., 449 U.S. 33, 36, 101 S.Ct. 188, 66 L.Ed.2d 193 (1980); Olefins Trading, Inc. v. Han Yang Chem. Corp., 9 F.3d 282 (3d Cir.1993); LifeScan Inc. v. Home Diagnostics, Inc., 103 F.Supp.2d 345, 350 (D.Del.2000) (citations omitted); see also 9A Wright & Miller, Federal Practice and Procedure § 2531 (2d ed.1994) ("On a motion for new trial the court may consider the credibility of witnesses and the weight of the evidence."). Among the most common reasons for granting a new trial are: (1) the jury's verdict is against the clear weight of the evidence, and a new trial must be granted to prevent a miscarriage of justice; (2) newly-discovered evidence exists that would likely alter the outcome of the trial; (3) improper conduct by an attorney or the court unfairly influenced the verdict; or (4) the jury's verdict was facially inconsistent. See Zarow-Smith v. N.J. Transit Rail Operations, 953 F.Supp. 581, 584-85 (D.N.J.1997) (citations omitted). The court must proceed cautiously, mindful that it should not simply substitute its own judgment of the facts and the credibility of the witnesses for those of the jury. Rather, the court should grant a new trial on the basis that the verdict was against the weight of the evidence only where a miscarriage of justice would result if the verdict were to stand. See Williamson, 926 F.2d at 1352; EEOC v. Del. Dep't of Health & Soc. Servs., 865 F.2d 1408, 1413 (3d Cir.1989).
A motion for reconsideration is the "functional equivalent" of a motion to
A patent is infringed when a person "without authority makes, uses or sells any patented invention, within the United States ... during the term of the patent." 35 U.S.C. § 271(a). To prove direct infringement, the patentee must establish, by a preponderance of the evidence, that one or more claims of the patent read on the accused device literally or under the doctrine of equivalents. See Advanced Cardiovascular Sys., Inc. v. Scimed Life Sys., Inc., 261 F.3d 1329, 1336 (Fed.Cir.2001). A two-step analysis is employed in making an infringement determination. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed.Cir. 1995). First, the court must construe the asserted claims to ascertain their meaning and scope. See id. Construction of the claims is a question of law subject to de novo review. See Cybor Corp. v. FAS Techs., 138 F.3d 1448, 1454 (Fed.Cir.1998). The trier of fact must then compare the properly construed claims with the accused infringing product. See Markman, 52 F.3d at 976. This second step is a question of fact. See Bai v. L & L Wings, Inc., 160 F.3d 1350, 1353 (Fed.Cir.1998).
"Direct infringement requires a party to perform each and every step or element of a claimed method or product." Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1320 (Fed.Cir.2009) (internal quotation marks omitted). "If any claim limitation is absent from the accused device, there is no literal infringement as a matter of law." Bayer AG v. Elan Pharm. Research Corp., 212 F.3d 1241, 1247 (Fed. Cir.2000). If an accused product does not infringe an independent claim, it also does not infringe any claim depending thereon. See Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 1546, 1553 (Fed.Cir.1989). However, "[o]ne may infringe an independent claim and not infringe a claim dependent on that claim." Monsanto Co. v. Syngenta Seeds, Inc., 503 F.3d 1352, 1359 (Fed.Cir.2007) (quoting Wahpeton Canvas, 870 F.2d at 1552) (internal quotations omitted). The patent owner has the burden of proving infringement and must meet its burden by a preponderance of the evidence. See SmithKline Diagnostics, Inc. v. Helena Lab. Corp., 859 F.2d 878, 889 (Fed.Cir.1988) (citations omitted).
A motion for JMOL will be granted when "a party has been fully heard on an issue and there is no legally sufficient evidentiary basis for a reasonable jury to find for that party on that issue." Fed. R. Civ. P. 50(a). Defendants renew their motion for JMOL on the issue of non-infringement
With respect to infringement of claim 4, plaintiffs sought to prove whether defendants' accused products satisfied the additional limitation of claim 4, that the cobalt salt be present in a range from about 20 to about 500 ppm of the composition. ('216 patent, 13:39-41) Plaintiffs' expert testified regarding the range of cobalt salt in the accused products. (D.I. 543 at 441:24-445:13, 447:4-449:3, 449:5-450:12) Defendants moved for JMOL of non-infringement, alleging that plaintiffs had not offered evidence (only conclusory statements) on the amount of salt. (D.I. 543 at 515:24-518:20) The court then heard argument and requested statements from the parties on the admissibility of defendants' anticipated defense and evidence. (D.I. 543 at 518:21-540:21) After reviewing the statements, the court excluded certain testimony and evidence. (D.I. 431; D.I. 432; D.I. 544 at 548:7-549:12) Pursuant to the exclusions, defendants' expert testified that he had no opinion as to the amount of cobalt salt in the final accused products. (D.I. 544 at 612:13-16)
At the close of evidence, the court granted plaintiffs' motion for JMOL, finding that defendants indirectly infringed claim 4. The court declines to revisit the evidentiary decisions made during the course of
Defendants rely on the same arguments described above to move for reconsideration or amendment of the judgment. Defendants request that the court rethink its decisions on the evidentiary issues at trial, precisely the type of request that is not properly the grounds for such a motion. Neither have defendants shown a "manifest injustice." Defendants' renewed motion for JMOL of non-infringement is denied.
Defendants advance several arguments in support of the renewed motion for JMOL. Defendants assert that "a reasonable jury considering all of the evidence would find by clear and convincing evidence that each of the [a]sserted [c]laims are invalid under 35 U.S.C. § 103 as obvious in view of the cited prior art." Defendants also argue that each of the limitations was present in the prior art and a person of ordinary skill
Defendants' motion focuses on three combinations: (1) European Patent Application No. 0301719 (DTX 268, "the '719 reference") and Japanese Patent No. 2663578 (DTX 314, "the '578 patent"); (2) International Patent Application No. WO 98/13266 (DTX 109, "the '266 reference") and the '578 patent; and (3) International Application No. WO 91/17925 (DTX 9, the '925 reference") and International Application No. WO 03/080731 (DTX 107, "the '731 reference"). The prior art references were before the U.S. Patent and Trademark Office ("PTO") during prosecution, with the exception of the '925 reference. The full translation of the '578 patent was only provided to the PTO after the notice of allowance was received.
"A patent may not be obtained... if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art." 35 U.S.C. § 103(a). Obviousness is a question of law, which depends on underlying factual inquiries.
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406, 127 S.Ct. 1727, 167 L.Ed.2d 705 (2007) (quoting Graham v. John Deere Co., 383 U.S. 1, 17-18, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966)).
"[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art." KSR, 550 U.S. at 418, 127 S.Ct. 1727. Likewise, a defendant asserting obviousness in view of a combination of references has the burden to show that a person of ordinary skill in the relevant field had a reason to combine the elements in the manner claimed. Id. at 418-19, 127 S.Ct. 1727. The Supreme Court has emphasized the need for courts to value "common sense" over "rigid preventative rules" in determining whether a motivation to combine existed. Id. at 419-20, 127 S.Ct. 1727. "[A]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed." Id. at 420, 127 S.Ct. 1727. In addition to showing that a person of ordinary skill in the art would have had reason to attempt to make the composition or device, or carry out the claimed process, a defendant must also demonstrate that "such a person would have had a reasonable expectation of success in doing so." PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342, 1360 (Fed.Cir.2007).
A combination of prior art elements may have been "obvious to try" where there existed "a design need or market pressure to solve a problem and there [were] a finite number of identified, predictable solutions" to it, and the pursuit of the "known options within [a person of ordinary skill in the art's] technical grasp" leads to the anticipated success. Id. at 421, 127 S.Ct. 1727. In this circumstance, "the fact that a combination was obvious to try might show that it was obvious under § 103." Id.
A fact finder is required to consider secondary considerations, or objective indicia of nonobviousness, before reaching an obviousness determination, as a "check against hindsight bias." See In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063, 1079 (Fed.Cir.2012). "Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented." Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966).
"Because patents are presumed to be valid, see 35 U.S.C. § 282, an alleged infringer seeking to invalidate a patent on obviousness grounds must establish its obviousness by facts supported by clear and convincing evidence." Kao Corp. v. Unilever U.S., Inc., 441 F.3d 963, 968 (Fed. Cir.2006) (citation omitted). In conjunction with this burden, the Federal Circuit has explained that,
PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1304 (Fed.Cir.2008) (quoting Am. Hoist & Derrick Co. v. Sowa & Sons, 725 F.2d 1350, 1359 (Fed.Cir.1984)).
At trial, defendants' expert, Dr. Moore, testified that the combination of the 719 reference and the '578 patent disclosed each limitation of the asserted claims.
As to motivation to combine,
(Id. at 633:20-634:12) Dr. Moore also testified that "if someone wanted to create a homogeneous active oxygen barrier that has greatly reduced haze, they would bring in the sulfonated polyester from the '578 [patent] into the ... active oxygen barrier technology taught by the '719."
Dr. Turner testified that there would be no motivation to combine, because
(Id. at 889:20-890:6) Therefore, Dr. Turner concluded that the combination does not render the claims obvious. (Id. at 890:7-10)
Plaintiffs also offered evidence of secondary considerations of nonobviousness, including unexpected results, long-felt need, failure of others, and commercial success. Dr. Schiraldi, one of the four named inventors on the '216 patent, testified that bottles with multilayered walls came into the marketplace in the late 1990s, but had a "dull, hazy look[]." (D.I. 542 at 269:3-20, 271:5-272:5) Using his manufacturing experience, Dr. Schiraldi experimented
After reviewing the research of a Spanish professor, who described mixing two dissimilar polymers (not the ones used by Dr. Schiraldi) using a compatibilizer, which resulted in a material with good mechanical properties (id. at 277:15-22, 277:19-278:4), Dr. Schiraldi added a third material to the PET/MXD6 combination, to promote mixing. After further research, a mixture of PET/SIPE with MXD6 and PET made the resulting material "nice and crystal clear," but still yellow in color. (Id. at 281:6-282:12, 284:10-14, 290:11-291:8; DTX 499 at INVISTA 871607)
With respect to the '216 patent, Dr. Moore testified
On cross-examination, Dr. Moore agreed that "if you change more than one variable or don't control for the others. That is, you don't control for all the variables except the one that you are testing, then you have a flawed test." He also agreed that because sodium acetate is a buffer, changing the amount of sodium acetate, would change how it buffered other components. (Id. at 763:20-765:9)
Dr. Turner testified that he was also engaged in research related to solving the yellowness and haziness issue in a PET bottle.
As to commercial success, Dr. Embs, director of new business development for Auriga Polymers,
Defendants' ActiTUF product was sold as an active barrier resin before the introduction of PolyShield. (Id. at 801:7-24) However, ActiTUF had problems with clarity and appearance. (Id. at 802:15-806:2) Mr. Fenoglio, defendants' global director of manufacturing for its PET business, testified
The jury was asked to consider whether defendants presented clear and convincing evidence of invalidity. Both parties presented to the jury the "problem to be solved" as reducing haze and yellowness in the final container. Therefore, a person of ordinary skill would be seeking to improve these two properties of a container material. KSR, 550 U.S. at 420, 127 S.Ct. 1727. Defendants did not present evidence that the combination was "obvious to try," i.e., that there existed only a finite number of solutions. Id. at 421, 127 S.Ct. 1727.
As to motivation to combine, the parties' experts gave competing testimony. The jury's job was to decide which testimony was more credible and they were also instructed to take into account secondary considerations. The jury found that the claims of the '216 patent were not obvious in view of the combination presented. Viewing the record in the light most favorable to plaintiffs, the court concludes that the jury credited the testimony of plaintiffs' expert regarding motivation to combine above that of defendants' expert. While defendants seek to minimize any impact of plaintiffs' testimony on secondary considerations, the court concludes that plaintiffs presented evidence of secondary considerations, including unexpected results, long felt need and commercial success. Plaintiffs' PolyShield product is characterized as providing better clarity and less yellowness. These properties are sought by the container industry. Plaintiffs have shown a nexus between the unexpected results and commercial success evidence and the merits of the invention. The jury's verdict is supported by substantial evidence.
Dr. Moore testified that the combination of the '266 reference and the '578 patent discloses each limitation of the asserted claims. (D.I. 544 at 642:5-651:11) Specifically, Dr. Moore testified that the '266 reference discussed "packaging for oxygen sensitive products, such as beer...." (Id. at 648:1-13) A partially aromatic polyamide (MXD6) and the cobalt salt elements were also described in the patent. (Id. at 648:14-25, 649:1-22) As discussed above, Dr. Moore testified that the '578 patent also covered a composition for containers (id. at 639:13-640:2) and provided the copolyester comprising a metal sulfonate salt element (id. at 640:3-18) and the partially aromatic polyamide (MXD6) element (id. at 640:19-641:2).
In discussing combining the '266 reference with a different patent in order to
(Id. at 647:2-17) Dr. Moore further testified:
(Id. at 653:2-9)
Dr. Turner discussed the '266 reference, pointing out that the patent addressed making a plastic beer container, which could be hot filled, withstand some pressure and meet gas permeability requirements for the shelf life of the product. The patent did not discuss haze or yellowness. (D.I. 545 at 855:16-856:5, 856:11-18, 857:10-12) He described the patent as directed towards "a total polyester system" using "an aromatic ester scanning polymer, not a polyamide." Further, the patent did not use a compatibilizer. (Id. at 857:25-859:3) Dr. Turner described the patent as identifying a list of other high barrier polymers, including MXD6, that could be used to make a multilayer bottle. He opined that the patent "points you towards a possible monolayer solution, that's all polyester solution. It certainly doesn't suggest that MXD6 ... could be put into a monolayer to solve this or to meet this great need that's out there." (Id. at 859:9-860:22)
Dr. Turner testified that the '266 reference did not evidence a motivation to combine with a reference teaching "a copolyester comprising a metal sulfonate or containing a metal sulfonate salt." (Id. at 861:25-862:2) The '578 patent does not describe or present a motivation to add cobalt salt, nor does it discuss yellowness reduction. Dr. Turner concluded that the combination does not "teach someone skilled in the art to put the ingredients together that are in the '216 patent that leads to the invention and the discovery that led to solving the huge challenge of making a suitable composition for packaging beer and fruit juice." (Id. at 903:21-904:5)
Defendants argue that where the technologies from the two prior art references are so interrelated, active barrier solutions and passive barrier solutions, there must be a motivation to combine. Belden Techs. Inc. v. Superior Essex
Dr. Moore testified that the combination of the '925 reference and the '731 reference disclosed each limitation of the asserted claims. (D.I. 544 at 626:10-628:6) Specifically, the '925 reference describes a composition for containers and a partally aromatic polyamide, as well as a cobalt salt. (Id. at 624:12-22) Table 1 of the '925 reference lists container compositions containing MDX6. (Id. at 626:10-14) The '731 reference also describes a composition for containers, with a copolyester, including a metal sulfonate salt. It also describes a partially aromatic polyamide, however, this is a passive barrier and the 731 reference does not disclose using a cobalt catalyst. (Id. at 621:5-9, 628:8-18)
Dr. Moore testified that, although the '925 reference was missing a "metal sulfonate salt ... [, a person of ordinary skill] would understand that compatibilization is a good thing and it's best to have, as taught in this patent, a container that consists of one layer that's homogeneous." (D.I. 544 at 619:6-18) Dr. Moore testified that a person of ordinary skill wanting "to make an active barrier that was homogeneous,... would look at the current literature at the time and find compatibilizers that were effective and ... may bring over a copolyester, including a metal sulfonate salt." (Id. at 621:16-22) Dr. Moore summarized:
(Id. at 623:8-21)
Dr. Turner testified that the '925 reference taught a complicated system to form a uniform polyamide product using an activated polyamide reacting with a nucleophilic reagent. (D.I. 545 at 891:2-18) "The active barrier is not described in the simple forms of just MXD6 and, and the cobalt salt." (Id. at 891:19-25) The '925 reference also did not teach reducing yellowness or haze, or a copolyester containing a metal sulfonate salt. (Id. at 892:13-24) Further, Dr. Turner testified that the '925 reference suggests using "a compatibilizer like Surlyn type, a polyethylene methacrylic acid, ... not a metal sulfonate salt copolyester." (Id. at 893:12-17) Surlyn would not work for a polyester and
Dr. Turner opined that the '731 reference would not have motivated a person of ordinary skill to select and use a particular polyester ionomer, listed in a huge laundry list of possible compatibilizers. (Id. at 880:6-14) Further, a person of ordinary skill would have no motivation to combine the two references as
(Id. at 904:15-905:11) "[T]he inventors would not look to these two patents and see the necessary things that would lead to solving this huge challenge in the bottle area." (Id. at 905:4-11) On cross-examination, Dr. Turner did agree that the 731 reference disclosed several preferred compatibilizers, including a copolyester containing metal sulfonate salt and Surlyn polymer. (Id. at 946:19-948-16) Dr. Turner further stated that the option of using "one of those preferred compatibilizers with the copolyester containing metal sulfonate salt that's disclosed expressly" couldn't be ruled out. (Id. at 950:23-951:12)
Defendants argue that Dr. Turner's admission on cross-examination that the option of using the preferred compatibilizer (a copolyester containing metal sulfonate salt) in the 731 reference with a copolyester constitutes clear and convincing evidence of obviousness. Dr. Moore characterized the 731 reference as describing a passive barrier and concluded that a person of ordinary skill would look at the '925 reference, which uses a Surlyn type compatibilizer, and substitute in the copolyester containing metal sulfonate salt from the 731 reference as they are "interchangeable." However, he agreed that Surlyn was not a copolyester containing a metal sulfonate salt, and Dr. Turner explained that Surlyn would not work for a polyester and partially aromatic polyamide blend. Dr. Turner described the references and their teachings, concluding that there would be no motivation to combine. The jury had the opportunity to hear from both experts. Some of Dr. Moore's opinions regarding the motivation to combine were conclusory and the jury found that the asserted claims were not rendered obvious by the combination. While defendants may disagree with the jury's decision, the record at bar does provide substantial evidence to support such a verdict.
The statutory basis for the enablement and written description requirements, § 112 ¶ 1, provides in relevant part:
"The enablement requirement is met where one skilled in the art, having read the specification, could practice the invention without `undue experimentation.'" Streck, Inc. v. Research & Diagnostic Systems, Inc., 665 F.3d 1269, 1288 (Fed.Cir.2012) (citation omitted). "While every aspect of a generic claim certainly need not have been carried out by the inventor, or exemplified in the specification, reasonable detail must be provided in order to enable members of the public to understand and carry out the invention." Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1366 (Fed.Cir.1997). The specification need not teach what is well known in the art. Id. (citing Hybritech v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384 (Fed.Cir.1986)). A reasonable amount of experimentation may be required, so long as such experimentation is not "undue." ALZA Corp. v. Andrx Pharmaceuticals, Inc., 603 F.3d 935, 940 (Fed. Cir.2010).
"Whether undue experimentation is needed is not a single, simple factual determination, but rather is a conclusion reached by weighing many factual considerations." Martek Biosciences Corp. v. Nutrinova, Inc., 579 F.3d 1363, 1378 (Fed. Cir.2009) (citing In re Wands, 858 F.2d 731, 737 (Fed.Cir.1988). The Federal Circuit has provided several factors that may be utilized in determining whether a disclosure would require undue experimentation: (1) the quantity of experimentation necessary; (2) the amount of direction or guidance disclosed in the patent; (3) the presence or absence of working examples in the patent; (4) the nature of the invention; (5) the state of the prior art; (6) the relative skill of those in the art; (7) the predictability of the art; and (8) the breadth of the claims. In re Wands, 858 F.2d at 737. These factors are sometimes referred to as the "Wands factors." The fact finder need not consider every one of the Wands factors in its analysis, rather, a fact finder is only required to consider those factors relevant to the facts of the case. See Streck, Inc., 655 F.3d at 1288 (citing Amgen, Inc. v. Chugai Pharm. Co., Ltd., 927 F.2d 1200, 1213 (Fed.Cir.1991)).
The enablement requirement is a question of law based on underlying factual inquiries. See Green Edge Enterprises, LLC v. Rubber Mulch Etc., LLC, 620 F.3d 1287, 1298-99 (Fed.Cir.2010) (citation omitted); Wands, 858 F.2d at 737. Enablement is determined as of the filing date of the patent application. In re '318 Patent Infringement Litigation, 583 F.3d 1317, 1323 (Fed.Cir.2009) (citation omitted). The burden is on one challenging validity to show, by clear and convincing evidence, that the specification is not enabling. See Streck, Inc., 665 F.3d at 1288 (citation omitted).
A patent must also contain a written description of the invention. 35 U.S.C. § 112, ¶ 1. The written description requirement is separate and distinct from the enablement requirement. See Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed.Cir.2011). It ensures that "the patentee had possession of the claimed invention at the time of the application, i.e., that the patentee invented what is claimed." LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1344-45 (Fed.Cir.2005). The Federal Circuit has stated that the relevant inquiry — "possession as shown in the disclosure" — is an "objective inquiry into the
This inquiry is a question of fact; "the level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology." Id. (citation omitted). In this regard, defendants must provide clear and convincing evidence that persons skilled in the art would not recognize in the disclosure a description of the claimed invention. See PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306-17 (Fed.Cir.2008) (citation omitted).
Dr. Moore opined on the lack of written description and enablement.
Dr. Turner disagreed with Dr. Moore's opinion regarding the data in table 3 and the experimentation regarding the synergistic effect.
Dr. Turner also testified that there was sufficient written description as the patent "describes a copolyester containing a metal sulfonate salt. It describes MXD6 as being added to that, partially aromatic polyamide, and it describes the cobalt salt that's added to the, to the, to this composition." Dr. Turner considered Dr. Moore's testimony regarding uncontrolled variables, however, this did not alter his opinion regarding enablement and written description. (Id. at 930:1-11, 937:23-938:17) Dr. Turner did not try to make the composition in his lab, but avers his students could do so. (Id. at 968:15-969:5)
Dr. Moore's opinion that the patent was not enabled and lacked written
In the alternative, defendants requested a new trial should the court deny the motions for JMOL on non-infringement and invalidity. Defendants' request is premised on the same arguments as its renewed motion for JMOL. For the same reasons discussed above, the jury's verdict is not against the clear weight of the evidence, therefore, the court denies defendants' request for a new trial.
Plaintiffs move for a permanent injunction (D.I.467) requesting that the court "enjoin [defendants] from manufacturing, using, offering for sale, selling and/or importing... PoliProtect APB and PoliProtect JB products until the expiration of" the '216 patent. (Id. at 1) Defendants disagree. Although plaintiffs' complaints listed permanent injunctive relief among the sought remedies, plaintiffs have not previously requested an injunction and waited "nearly two years since first accusing [defendants] of infringement" to present the request. (D.I. 481 at 2-3, 13)
In eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 126 S.Ct. 1837, 164 L.Ed.2d 641 (2006) (vacating and remanding MercExchange, L.L.C. v. eBay Inc., 401 F.3d 1323, 1339 (Fed.Cir.2005)) (hereinafter "eBay"), the Supreme Court overruled the Federal Circuit's longstanding "general rule that courts will issue permanent injunctions against patent infringement absent exceptional circumstances." Permanent injunctions in patent cases must be based on a case-by-case assessment of the traditional equitable factors governing injunctions. Id. at 1839. That is, to be awarded a permanent injunction, a plaintiff must demonstrate: "(1) that it has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction." Id. "[T]he decision whether to grant or deny injunctive relief rests within the equitable discretion of the district courts, and that discretion must be exercised consistent with traditional principles of equity, in patent disputes no less than in other cases governed by such standards." Id. at 1841.
Courts awarding permanent injunctions typically do so under circumstances in which the plaintiff practices its invention and is a direct market competitor.
Plaintiffs
Relying on Apple, Inc. v. Samsung Electronics Co., 678 F.3d 1314 (Fed.Cir.2012), defendants argue that the bi-component pellet feature of its PoliProtect products drives customer demand, as it makes the products more cost-effective for customers. Id. at 1325 (finding an insufficient nexus between competitor's design patent covering smartphone screen design and smartphone purchases to grant a preliminary injunction). However, the monolayer product sales are also driven by customers' need for high barrier properties, low yellowness and haze, which properties result from the claimed composition. Therefore, plaintiffs have evidenced a sufficient nexus between the alleged harm and infringement.
As a direct competitor, plaintiffs aver that they "will suffer irreparable injuries including lost sales and market share, the loss of research and development activities, a loss of goodwill in the market, and a forced loss of their patent exclusivity." (D.I. 468 at 5-6) Plaintiffs allege that the customer base for barrier polyester products in the United States is small, and the parties are competing for the developing beer market. Further, the major beer brewers in the United States "are beginning to transition to polyester beer bottles for the first time," and this market is poised for significant growth. (Id. at 9-10) Moreover, plaintiffs "cannot presently be price-competitive" with defendants, because plaintiffs must pay royalties on PolyShield resin sold, under a license to certain of defendants' patents. (D.I. 468 at 10-11) Customers could not readily switch to PolyShield at a later time, as customers would have to qualify
Plaintiffs also allege collateral harm resulting from defendants' infringing sales due to losses in its research and development program, inability to recoup its investment in its South Carolina manufacturing plant and loss of goodwill among its customers. (D.I. 468 at 12-13) A plaintiff's willingness to forego its patent rights for compensation, though certainly not dispositive, is one factor to consider with respect to whether plaintiff will suffer irreparable harm. eBay, 547 U.S. at 392-93, 126 S.Ct. 1837 (rejecting categorical rule that patentee licensors can not demonstrate irreparable harm). Here, the parties dispute whether plaintiffs offered to license defendants to practice the '216 patent, with plaintiffs stating that the evidence reflects preliminary discussions in 2006 regarding two European patent applications. (D.I. 481 at 14-15; D.I. 489 at 8)
The parties' ongoing battle in the press regarding this action and another lawsuit is confusion of their own making. (D.I. 489 at 5-6; D.I. 502) The parties' arguments that each has made misstatements in the press and plaintiffs' subsequent claim that the press exchange damaged their goodwill does not ring true in this litigious era, and certainly cannot be the basis for a permanent injunction.
With only two manufacturers of monolayer products in the market, the court concludes that "a sale to defendant is the loss of a sale to plaintiff." TruePosition, 568 F.Supp.2d at 531. On the record at bar, irreparable harm has been established.
Plaintiffs contend that legal remedies are not adequate compensation due to the irreparable injuries described above, "including lost sales and market share, lost market opportunities, loss of research and development activities, a loss of goodwill and reputation in the market, and a forced loss of their patent exclusivity," as each of these harms would be difficult to accurately quantify. (D.I. 468 at 15-16) Defendants disagree and aver that a loss of market share is measurable. (D.I. 481 at 9-10)
In March of 2011, plaintiffs sold the North American assets of Invista's Polymers and Resins business, which included "the exclusive right to manufacture, use, offer for sale, and sell PolyShield® resin and Oxyclear® barrier PET in the United States and the Americas, and the exclusive right to practice the '216 patent in those territories." This evidences that monetary damages may be measurable. However, in a head-to-head competition for any market share, plaintiffs are at a disadvantage. Martek Biosciences Corp. v. Nutrinova Inc., 520 F.Supp.2d 537, 558-59 (D.Del. 2007), rev'd on other grounds, 579 F.3d 1363 (Fed.Cir.2009) (granting permanent injunction where plaintiff and defendant were direct competitors, supply agreements in the food and beverage industry are long-term, and plaintiff was "likely to
Plaintiffs argue that without an injunction, defendants will become plaintiffs' compulsory licensee. In light of defendants' infringement and the irreparable harm described above, plaintiffs argue that the balance of hardships weighs in their favor. (D.I. 468 at 15-16) Defendants respond that their business will be greatly harmed by an injunction, as it was found to not directly infringe. Therefore, defendants argue that they have a right to continue to manufacture their products. (D.I. 481 at 17) Defendants were found to indirectly infringe all of the asserted claims, as their customers mix the PoliProtect products, and thereby necessarily practice the '216 patent. The court concludes that the balance of hardships favors plaintiffs.
As the asserted claims have been found valid and infringed, plaintiffs argue that the public interest in upholding plaintiffs' patent rights is significant and well recognized. (D.I. 468 at 17) Defendants argue the public interest will be hurt by the removal of an innovative competitive product, referencing their bi-component pellet. Customers will suffer the costs associated with qualifying a new product and the downtime associated with such qualification. (D.I. 481 at 17-18) Taking all factors into account, the court concludes that this factor is neutral.
For the aforementioned reasons, plaintiffs have demonstrated irreparable injury, as well as the inadequacy of money damages. Further, the hardship to plaintiffs outweighs that of defendants. Plaintiffs' motion for a permanent injunction is granted.
The Federal Rules of Civil Procedure require courts to freely give leave to amend "when justice so requires." Fed. R. Civ. P. 15(a)(2). The court may exercise its discretion to deny leave to amend in situations in which the moving party has delayed seeking leave and the delay "is undue, motivated by bad faith, or prejudicial to the opposing party." Bjorgung v. Whitetail Resort, LP, 550 F.3d 263, 266 (3d Cir.2008) (citation omitted). After a pleading deadline has passed, courts have required the movant to also satisfy the more rigorous "good cause" standard of Federal Rule of Civil Procedure 16(b)(4).
Defendants filed a second motion to amend the pleadings on June 19, 2013, less than one month before trial. (D.I.365) As the motion was filed so close to trial, the parties agreed to suspend briefing until after trial. Defendants seek to add claims and defenses asserting that the three patents-in-suit are unenforceable based on inequitable conduct. Defendants' first motion to amend the pleadings, filed August 6, 2012 (the last day to amend the pleadings) accused patent attorney Craig Sterner of perpetrating a fraud on the
In this motion, defendants accuse a different person, Dr. Scantlebury, Invista's Patent Liaison for the asserted patents, of inequitable conduct. Plaintiffs' production was substantially complete in May 2012 with Invista producing documents as late as September 28, 2012 and Auriga as late as October 11, 2012. (D.I. 366 at 2; D.I. 367 at ¶ 3; D.I. 449 at 1) Defendants deposed Dr. Scantlebury in August 2012 and all of the inventors were deposed by October 2012. "`Good cause' exists when the [s]chedule cannot reasonably be met despite the diligence of the party seeking the extension." ICU Med., 674 F.Supp.2d at 577. Defendants argue that the motion was timely because of the volume of plaintiffs' production and the "complex factual allegations" involved in determining the inequitable conduct. Further, defendants aver that they worked diligently between the time of the issuance of the report and recommendation denying the first motion to amend on April 30, 2013 and the date of filing of this motion, June 19, 2013.
The court finds that defendants have not met the good cause requirement, as defendants have not offered sufficient explanation for their undue delay, filing their second round of inequitable conduct challenges a year after both the amendment deadline and Dr. Schantlebury's deposition. Moreover, defendants' allegations in its second motion were not vetted through the discovery process; therefore, allowing defendants to proceed would prejudice plaintiffs by requiring discovery, preparations, and additional costs. Defendants' motion to amend the pleadings is denied.
Defendants request reconsideration of the court's oral order of July 16, 2013 overruling Magistrate Judge Burke's memorandum order which had granted defendants' motion to compel certain Auriga produced documents. This motion was filed on July 30, 2013, a week after the jury trial. While defendants argue that the court "made an error not of reasoning but of appreliension," the court disagrees. Defendants have failed to demonstrate any of the appropriate grounds to warrant reconsideration. As such, the motion is denied.
As the parties stipulated to stay briefing on the motions for attorney fees (D.I. 451; D.I. 452; D.I. 455) until such time as all of the issues were resolved (D.I. 476, so ordered), the court denies these motions without prejudice to renew at a later time.
For the aforementioned reasons, defendants' renewed motions for JMOL on invalidity and non-infringement (D.I. 470; D.I. 473) are denied. Plaintiffs' motion for an injunction (D.I.467) is granted. Defendants' motions for leave to file amended pleadings (D.I.365) and reargument of the court's July 16, 2013 oral order (D.I.444) are denied. The parties motions for attorney fees (D.I. 451; D.I. 452; D.I. 455) are denied without prejudice to renew. An appropriate order shall issue.
At Wilmington this 31st day of March, 2014, consistent with the memorandum opinion issued this same date;
IT IS ORDERED that:
1. Defendants' renewed motion for JMOL on invalidity (D.I.470) is denied.
3. Plaintiffs' motion for an injunction (D.l.467) is granted.
4. Defendants' motion for leave to file amended pleadings (D.l.365) is denied.
5. Defendants' motion for reargument of the court's July 16, 2013 oral order (D.444) is denied.
6. Invista's motion for attorney fees (D.l.451) is denied without prejudice to renew.
7. Auriga's motion for attorney fees (D.I.452) is denied without prejudice to renew.
8. Defendants' motion for attorney fees (D.I.455) is denied without prejudice to renew.
