TUCKER, District Judge.
Presently before the Court is Defendant Antec Inc.'s Motion for Judgment as a Matter of Law of Invalidity (Doc. 174), Defendant's Renewed Motion for Judgment as a Matter of Law, or, in the Alternative, New Trial (Docs. 187, 188), Plaintiff's Response (Doc. 199), Defendant's Reply (Doc. 201), Plaintiff's Sur-Reply (Doc. 204), and all accompanying briefs and relevant correspondence. For the reasons set forth below, Defendant's Motion is
Plaintiff, Comaper Corporation ("Comaper"), co-owned by William Corcoran ("Corcoran") and Gary Smith ("Smith"), owns United States Patent No. 5,955,955 ("'955 patent"), which claims a cooling device which mounts within the drive bay region of a computer. The application for
Defendant, Antec, Inc. ("Antec"), manufactures computer accessories sold under the names "Hard Disk Cooling System with Temperature Monitors, "HD Cooler," and "Hard Disk Drive Cooler," (collectively "the Accused Devices"). On March 8, 2005, Comaper filed suit in this Court against Antec, alleging that Antec infringed the '955 patent with its Accused Devices. Antec counterclaimed that the '955 patent was invalid, unenforceable, and was not infringed by Antec. (Doc. 7.)
On July 17, 2006, pursuant to Markman v. Westview, Inc., 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996), this Court conducted a Markman hearing to determine the meaning of disputed terms in the '955 patent. On September 13, 2006, the Court construed the disputed terms by ordering the following definitions:
After completion of a five day trial, on October 10, 2007, the jury returned a Special Verdict, finding that Antec willfully infringed claims 1, 2, 7, 12, and 13 of the '955 patent. Comaper Corp. v. Antec, Inc., No. 05-CV-1103, 2008 WL 4140384, at *2 (E.D.Pa. Sept. 8, 2008) ("JMOL Order"). Additionally, the jury concluded that the prior art devices submitted by Antec "were in public use, offered for sale, or described in publications more than one year prior to the application for the '955 patent." Id. However, on appeal, the Federal Circuit found the Special Verdict to be inconsistent, due to the fact that the jury concluded that the asserted claims of the '955 patent were not anticipated, claims 1 and 12 were not obvious, but that dependent claims 2, 7, and 13, were invalid as obvious.
As a result, the Federal Circuit affirmed in part, vacated in part, and remanded the matter to this Court for a new trial on the issue of validity concerning the inconsistent
Upon completion of the retrial, held in this Court from January 10, 2011 through January 21, 2011, the jury found that independent claims 1 and 12 of the '955 patent were valid. During the retrial, Plaintiff withdrew dependent claims 2, 7, and 13 from the charge.
Claim 1 of the patent describes:
Claim 12 states:
In a computer having a drive bay region with at least one drive bay slot adapted to receive a drive, an improvement comprising:
During the second jury trial, both Plaintiff and Defendant moved for judgment as a matter of law under Rule 50(a), with such motions being denied by this Court. Subsequently, on January 20, 2011, Defendant filed its Memorandum of Law in support of its Motion for Judgment as a Matter of Law of Invalidity due to Obviousness (Doc. 174), and further briefed its position with its present Renewed Motion for Judgment as a Matter of Law pursuant to Rule 50(b), or, in the Alternative, New Trial (Docs. 187, 188.)
Federal Rule of Civil Procedure 50 provides on opportunity for a party to
In determining a Rule 50 motion "[t]he question is not whether there is literally no evidence supporting the party against whom the motion is directed but whether there is evidence upon which the jury could properly find a verdict for that party." Foster v. Nat'l Fuel Gas Co., 316 F.3d 424, 428 (3d Cir.2003) (quoting Patzig v. O'Neil, 577 F.2d 841, 846 (3d Cir.1978)). In viewing all the evidence which has been tendered and should have been admitted, the court must draw all reasonable inferences in favor of the nonmoving party, and it may not make credibility determinations or weigh evidence. Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150-51, 120 S.Ct. 2097, 147 L.Ed.2d 105 (2000). Although JMOLs should be granted sparingly, federal courts do not follow the rule that a scintilla of evidence is enough for the Court to deny the motion. Id.
The standard under Fed. R. Civ. P. 50(b) is unambiguous and well-known. In order for a party to preserve the right to renew a motion for JMOL after the jury has rendered its verdict, a party must move for JMOL at the close of all evidence. Bradford Co. v. Jefferson Smurfit Co., No. 05-1511, 2001 WL 35738792, 2001 U.S. App LEXIS 25205 (Fed.Cir.2001). Third Circuit precedent maintains this standard. See Chemical Leaman Tank Lines v. Aetna Cas. & Sur. Co., 89 F.3d 976, 992 (3d Cir.1996) (stating "[m]otions for judgment as a matter of law must be made before submission of the case to the jury and must `specify the judgment sought and the law and facts on which the moving party is entitled to judgment' under Fed.R.Civ.P. 50(a)(2)"); Lightning Lube v. Witco Corp., 4 F.3d 1153, 1173 (3d Cir.1993) (stating "[a] motion for judgment as a matter of law pursuant to Rule 50(b) must be preceded by a Rule 50(a) motion sufficiently specific to afford the party against whom the motion is directed with an opportunity to cure possible defects in proof which otherwise might make its case legally insufficient.") Defendant Antec, through its motion at the close of evidence (Doc. 174), has properly preserved its right to have its post-trial JMOL motion (Docs. 187, 188) reviewed by this Court.
To succeed on a renewed motion for JMOL following a jury trial and verdict, the movant "`must show that the jury's findings, presumed or express, are not supported by substantial evidence or, if they were, that the legal conclusion(s) implied [by] the jury's verdict cannot in law be supported by those findings.'" Pannu v. Iolab Corp., 155 F.3d 1344, 1348 (Fed. Cir. 1998) (quoting Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 893 (Fed.Cir.1984)). "Substantial evidence" is defined as "such relevant evidence from the record taken as a whole as might be accepted by a reasonable mind as adequate to support the finding under review." Perkin-Elmer Corp., 732 F.2d at 893.
A court may grant a new 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)(A). Generally, a court will order a new trial: (1) when 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) when improper conduct by an attorney or the court
Defendant Antec moves for judgment as a matter of law. Defendant claims that it is entitled to such judgment due to the anticipatory nature and obviousness of prior art, making claims 1 and 12 of the '955 patent invalid under 35 U.S.C. §§ 102 and 103. According to Defendant, the only differences between the '955 claims at issue and the prior art are: (1) the size of the cooling devices, and (2) the differing configurations of the units into which the cooling devices are mounted. Further, Defendant asserts that because claims 1 and 12 of the '955 patent fail to specify the device's size or the configuration of the computer into which it is mounted, these small differences should have no bearing on the analysis of invalidity of the '955 patent claims.
Additionally, Defendant argues that since the scope and content of prior art is undisputed, and that stipulated facts during the retrial lead to the conclusion that all elements of the '955 patent were practiced and in existence for decades prior to the filing of the '955 patent, the Court should enter judgment of invalidity in favor of Defendants regarding claims 1 and 12 of the '955 patent. Alternatively, Defendant asserts that if the Court declines to grant judgment as a matter of law based on obviousness or anticipation, a new trial should be ordered.
Plaintiff counters that at the retrial, there was sufficient evidence provided to support the jury verdict that claims 1 and 12 of the '955 patent were valid, and were neither anticipated nor obvious. In particular, Plaintiff asserts that testimony provided by both Defendant's and Plaintiff's expert witnesses, commenting about size being an appropriate consideration when construing the terms of this Court's Markman Order, establishes that there is a relevant size between the device contemplated by the claims of the '955 patent and the prior art presented by Defendants. According to Plaintiff, this alleged size differential should preclude such prior art from rendering the '955 invalid.
The Court agrees with Defendant's position, as discussed below. The Court finds that Defendants are entitled to judgment as a matter of law based on the clear and convincing evidence provided at trial concerning the anticipation of claims 1 and 12 of patent '955, and the lack of legally sufficient evidence to support the jury finding of validity concerning the same. Because the Court grants Defendant's JMOL motion due to anticipation, the Court need not address the parties' arguments concerning obviousness as a basis for invalidity.
It is well established that "[an] issued patent carries a presumption of validity." Smiths Indus. Med. Sys., Inc. v. Vital Signs, Inc., 183 F.3d 1347, 1356 (Fed.Cir. 1999) (citing 35 U.S.C. § 282). "This presumption is manifested by the requirement that one who seeks to invalidate [the] patent [must] do so by clear and convincing
As 35 U.S.C. § 282 states, the burden of proof remains with the challenger of the validity of a patent throughout the litigation. Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1375 (Fed.Cir. 1986); Mas-Hamilton Group v. LaGard, Inc., 156 F.3d 1206, 1216 (Fed.Cir.1998). This Court must determine whether the jury had proper grounds to find that the challenger, Defendant Antec, failed to meet its burden by clear and convincing evidence, including any rebuttal evidence presented by the patentee, that claims 1 and 12 of the '955 patent were invalid. Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1534 (Fed.Cir.1983). In doing so, the Court must look at the circumstances in a light most favorable to Plaintiff Comaper, the nonmoving party.
In support of its anticipation argument, Defendant Antec provides this technical description of the Control Data Corporation Nova 3 (the "Nova"):
Defendant Antec sought to establish anticipation by presenting evidence that the Fujitsu device contains all element of the '955 patent.
Defendant challenges the jury finding, and submits that claims 1 and 12 of the '955 patent should be found invalid due to anticipation. Under 35 U.S.C. § 102, the patent infringement defense of anticipation is set forth, in relevant part, as follows:
Particular requirements are necessary to prove that a prior art reference anticipates under 35 U.S.C. § 102(b).
Additionally, at the retrial, the burden of proving invalidity due to anticipation rested with Defendant Antec, who needed to show by clear and convincing evidence that all elements of claims 1 and 12 were found in a single prior art reference. More specifically, Defendant's experts were required, in their testimony, to identify each claim element, state [their] the witnesses' interpretation of the claim element, and explain in detail how each claim element is disclosed in the prior art reference. The testimony is insufficient if it is merely conclusory." Koito Mfg. Co. v. Turn-Key-Tech,
During retrial, defense experts Mr. Lyle Bickley and Mr. Sellam Ismail, both qualified experts skilled in the art relevant to this case, testified about their impressions of the prior art references submitted by Defendant Antec, and whether they qualified as inventions used prior to the existence of the cooling device patented under the '955 patent. Plaintiff William Corcoran also testified as an expert witness, providing his views on the prior art offered by Defendant Antec.
Defense expert Mr. Bickley provided a detailed, element by element comparison, along with his impressions of both the Fujitsu and Nova devices. Bickley testified generally that both prior art devices had all of the components of the '955 patent. (Tr. 63: 5-25; 64:6, January 14, 2011.)
Where the parties views diverge, however, are on the issues of whether: (1) the term "Drive Bay Slot", as defined by this Court in its Markman order, should have been considered by the jury with certain dimensional limitations that were not included in the Markman Order definition, and (2) whether the comparison of claims required the jury to assume that the prior art needed to involve a personal computer.
Plaintiff asks this Court to find that the expert testimony at retrial supported the jury's finding of validity, and lack of anticipation. More specifically, Plaintiff avers that all experts indicated that the term "Drive Bay Slot", defined in this Court's Markman Order, only makes sense if it is limited to specific dimensions, and that none of the prior art possessed these dimensions, supporting a finding of validity and non-anticipation. Further, Plaintiff alleges that the '955 patent was intended to cover personal computers only, contrary to the prior art devices presented at retrial, which fit into rack mounted systems.
Defendant counters that the prior art considered at trial anticipates claims 1 and 12 of the '955 patent. Additionally, Defendant contends that Plaintiff takes the expert testimony concerning dimensions and computer size out of context, and attempts to read in a different claim construction of a technical term at the eleventh hour. The Court agrees with Defendant's position, and finds that the jury lacked sufficient and substantial legal basis to return a verdict of validity concerning claims 1 and 12 of the '955 patent, based on evidence presented at trial.
Moreover, even if testimony offered by Antec's experts intended to limit the Court's claim construction, such a limitation could not be properly made by expert witnesses, as any change in construction of an established Markman order term may have only been made on a rolling basis by the Court. Conoco, Inc. v. Energy & Envtl. Int'l, L.C., 460 F.3d 1349, 1359 (Fed.Cir.2006). Notably, despite the line of questioning and testimony concerning how the term "drive bay slot" could be narrowly construed to be a slot with specific dimensional sizes typically found in a PC, the Court declined to revise or update any of its Markman Order definitions during retrial.
Both Mr. Bickley and Mr. Ismail testified that the Court's definition of the term might be interpreted to be limited to a slot configured specifically for a PC, into which the cooling device described in the '955 patent could be inserted, with such PC-type slot having the defined dimensions of 3.5" and 5.25". Both experts testified, however, that such a reading of the Court's definition of "Drive Bay Slot" would go against the meaning that would be ascribed to the term by a person of ordinary skill in the art. (Tr. 94; January 14, 2011; Tr. 56; January 19, 2011.)
The Court finds that the jury's decision on invalidity due to anticipation should have been centered upon the actual language of claims 1 and 12, and the actual language of the Court's Markman Order definitions, both of which were silent on size dimensions, and silent on what equipment constitutes a "computer"
The Fujitsu and Nova, submitted by Defendant Antec as prior art devices, are sleds that fit into rack mounted computer systems. Contrary to Plaintiff's assertion, the jury lacked legally sufficient evidence to conclude, based on the testimony and devices offered during the retrial, that both the Fujitsu and Nova devices offered by Defendant Antec as prior art references did not contain all of the elements of claims 1 and 12 of the '955 patent. The fact that the two devices are sleds that can fit into a slot opening of any size, and not a slot with the dimensions Plaintiff asks the Court to read into its Markman definition of "drive bay slot", bears no legal relevance to an analysis of anticipation.
Furthermore, "that which would literally infringe if later anticipates if earlier" is a well established patent law rule. Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1378 (Fed.Cir. 2001); see Int'l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1239 (Fed.Cir.2009). Defendant avers that the Nova is identical when compared to two Antec devices,
The testimony of Defendant's and Plaintiff's experts, as well as the Fujitsu and Nova prior arts devices, provided insufficient legal basis for the jury verdict. To be sure, Plaintiff's own expert witness, Mr. Corcoran, testified that ["the '955 does not specify size or that it must be inserted into a PC ..." This lends additional support to the conclusion that the jury's finding that claims 1 and 12 were not invalid as anticipated, as the drive bay slot, defined as a PC-type slot, was a required element, was legally unsupported.
Based on the above, and considering the record in a light most favorable to Plaintiff Comaper, the Court finds that the jury finding of validity was unsupported by substantial evidence at trial.
Giving Plaintiff Comaper the benefit of the doubt, even if the Court determined that the jury's verdict was supported by substantial evidence at retrial, judgment as a matter of law would remain appropriate. The movant, Antec has shown that even if the jury's findings were supported by substantial evidence, "`the legal conclusion(s)
The United States Court of Appeals for the Federal Circuit has determined that where a Plaintiff presents only one difference between a prior art reference and a patented invention, with such singular difference failing to provide sufficient evidence to support patent validity, the patent will be deemed invalid due to anticipation. In Blackboard v. Desire2Learn, 574 F.3d 1371 (Fed.Cir.2009), the Federal Circuit reversed the district court's finding and granted JMOL to Defendant, Desire2Learn. In relevant part, the Federal Circuit found that two prior art references submitted by Desire2Learn caused Blackboard's patent to be invalid due to anticipation. Id. at 1380.
The Blackboard court stated "[a]s Desire2Learn points out, Blackboard's trial expert identified only one difference between the system and methods of the '138 patent and the prior art systems, the `single login'... once the claims are properly construed, the conclusion of anticipation is dictated by the testimony of Blackboard's own witnesses and the documentary evidence that was presented to the jury. Based on that evidence, and in the absence of a `single login' requirement in claims 36-38, it is clear that the prior art contains every limitation of those claims." Id. at 1381-82.
Similarly, in the present matter, Plaintiff Comaper presented only one difference in support of its contention that the prior art submitted by Antec (the Fujitsu and Nova) did not anticipate claims 1 and 12 of the '955 patent. The singular difference emphasized by Comaper was the difference in the sizes of the devices, a specification not found anywhere in the '955 patent itself,
Based on the record, the Court finds it clear that the Fujitsu and Nova contained every limitation of claims 1 and 12 of the '955 patent. Thus, JMOL in favor of Defendant Antec is appropriate, as the evidence established the invalidity of patent '955 due to anticipation.
Defendant Antec submits that pursuant to 35 U.S.C. § 103, claims 1 and 12 of the '955 patent were invalid as obvious, and that during the retrial, the jury possessed legally insufficient evidence to conclude otherwise.
The law addressing the validity of a patent being contingent upon non-obviousness
At the retrial, Defendant Antec presented numerous prior art devices and manuals, as well as expert testimony in support of its contention that the '955 patent was invalid due to obviousness. The Court need not reach the issue of whether the jury verdict of validity was supported by sufficient legal basis, as the Court has already determined above that the jury's verdict concerning a lack of anticipation was not legally supported, thus making appropriate a finding for JMOL in favor of Defendant Antec.
The Court finds that there exists no basis for the finding of a new trial. As detailed above, the Court has granted Defendant Antec's motion for JMOL. As the Court has broad discretion on determining whether a new trial is warranted,
During retrial on the issue of validity for claims 1 and 12 of the '955 patent, the jury lacked sufficient legal cause to determine that Antec failed to meet its burden of showing, by clear and convincing evidence, that claims 1 and 12 were invalid as obvious or anticipated. Accordingly, for the reasons discussed above, Defendant's renewed motion for judgment as a matter of law is granted. An appropriate order follows.
PETRESE B. TUCKER, District Judge.
