The opinion of the court was delivered by: Hon. Rudi M. Brewster United States Senior District Court Judge
ORDER DENYING DEFENDANT'S MOTION FOR A NEW TRIAL
Defendant Faro Technologies, Inc. ("Defendant" and "Faro") moves the Court for a new trial on the issue of patent invalidity. For the reasons herein, the motion is DENIED.
The litigation between Cimcore Corp., Romer Inc., Hexagon Metrology, and Homer Eaton (collectively "Plaintiffs" and "Romer") and Faro concerns claims 1, 2, and 3 of U.S. Patent No. 5,829,148 ("the '148 patent") directed to a coordinate measuring arm.
Beginning on October 30, 2006, the case was tried before a jury. Faro had the burden to prove by clear and convincing evidence its affirmative defense of invalidity based on obviousness and indefiniteness. The jury began deliberations on November 29, 2006, considering Plaintiffs' infringement case as well as Defendants' invalidity claims. On December 1, 2006, the jury found unanimously that the claims 1, 2, and 3 of the '148 patent were not invalid. The jury was unable to reach a verdict on infringement. The Court entered Judgment that the '148 patent was not invalid on December 7, 2006. Faro now moves for a new trial on invalidity.
Federal Rule of Civil Procedure 59(a) provides for the grant of a new trial. The grant of a new trial is "confided almost entirely to the exercise of discretion on the part of the trial court." Murphy v. City of Long Beach, 914 F.2d 183, 186 (9th Cir. 1990) (citing Allied Chemical Corporation v. Daiflon, Inc., 449 U.S. 33, 36 (1980); Hard v. Burlington N.R.R., 812 F.2d 482, 483 (9th Cir. 1987)). A trial court may grant a new trial if the verdict is "contrary to the clear weight of the evidence, or is based upon evidence which is false, or to prevent, in the sound discretion of the trial judge, a miscarriage of justice." Richardson v. Suzuki Motor Co. 868 F.2d 1226, 1245 (Fed. Cir. 1989). In general, a court should grant a new trial only when the judge "is left with the definite and firm conviction that a mistake has been committed." Landes Constr. Co. v. Royal Bank of Canada, 833 F.2d 1365, 1372 (9th Cir. 1987).
Faro moves for a new trial on three grounds: (1) new evidence, based on a recent office action in the reexamination proceedings of the '148 patent in the United States Patent and Trademark Office (USPTO); (2) the jury determined invalidity based on an erroneous claim construction; and (3) admission of alleged prejudicial evidence consisting of evidence related to the preferred embodiments of the '148 patent. The Court is unpersuaded that a new trial is warranted on any of these grounds.
For new evidence to form the basis for a new trial, a party must demonstrate that "(1) the evidence was discovered after trial, (2) the exercise of due diligence would not have resulted in the evidence being discovered at an earlier stage and (3) the newly discovered evidence is of such magnitude that production of it earlier would likely have changed the outcome of the case." Defenders of Wildlife v. Bernal, 204 F.3d 920, 929 (9th Cir. 2000).
Faro's "new evidence" is the discovery of U.S. Patent No. 4,990,839 ("the Schonlau patent") by the USPTO cited in the December 7, 2006 office action in the reexamination of the '148 patent. While this evidence was brought to the attention of Faro after the trial, the Court finds that it does not merit consideration as "new evidence." The Schonlau patent issued on February 5, 1991; it has been publicly available for over fifteen years. Schonlau is of public record, available on a searchable database maintained by the USPTO and accessible on the internet.
Moreover, Faro has failed to explain why with due diligence it could not have discovered this evidence prior to trial. Although Faro asserts that neither party nor the USPTO found this document before trial, Faro offers no evidence of the extent or nature of its search efforts that would attest to due diligence on its part. Furthermore, it does not appear that Schonlau was hidden or difficult to discover. Its title, abstract and claims all contain key words that are intimately related to the subject matter of the instant litigation and that may be employed in a search on the public USPTO database. Thus, without a more substantial showing of diligence, the evidence does not meet the threshold requirements to warrant a new trial.
Faro's second basis for a new trial also is unpersuasive. Faro argues error with respect to the claim construction, in particular, the Court's construction of the terms "transfer member" and "joint assembly." With respect to transfer member, Faro argues that the construction given to and used by the jury was too broad and lacking in structural detail so that it could include too many parts of the articulated arm. In regard to joint assembly, Faro argues that the Court's construction of this term confused the jury and was inconsistent with dictionary definitions of the word. ...