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Duhn Oil Tool, Inc v. Cooper Cameron Corporation

September 30, 2011

DUHN OIL TOOL, INC.,
PLAINTIFF,
v.
COOPER CAMERON CORPORATION, DEFENDANTS.



The opinion of the court was delivered by: Oliver W. Wanger United States District Judge

MEMORANDUM DECISION REGARDING MOTIONS FOR ENTRY OF JUDGMENT, MOTION FOR JUDGMENT AS A MATTER OF LAW

I. INTRODUCTION.

Plaintiff Duhn Oil Tool, Inc. proceeds with a patent infringement action against Defendant Cooper Cameron Corporation. On February 2, 2011, a jury found Defendant liable for infringement and contributory infringement. (Doc. 668). The jury also found several of the patent's claims invalid and returned an advisory verdict on Defendant's counterclaim for inequitable conduct.

On February 9, 2011, the parties filed motions for entry of judgment. (Docs. 675, 676). The court heard the parties' motions on February 11, 2011 and requested briefing on a dispute between the parties regarding the scope of the jury trial. The parties submitted briefing on the jury issue on February 28, 2011. (Docs. 681, 682). The parties submitted proposed findings of fact on March 7, 2011. (Docs. 685, 686). The parties proposed findings are based on their respective positions regarding the scope of they jury's verdict.*fn1

II. FACTUAL BACKGROUND.

Duhn Oil Tool, Inc. ("Duhn Oil" or "Plaintiff") and Cooper Cameron Corporation ("Cameron" or Defendant") are manufacturers of wellhead systems and components for the oil and gas industry. Cameron is a former purchaser of Duhn Oil wellhead components, including Duhn Oil's W2 tubing heads and W92 casing heads. Cameron purchased Duhn Oil components for resale to end users.

In 1996, Duhn Oil obtained a patent for a device it named the "Quicklock Drilling Flange" ("QDF"), a drilling flange capable of being quickly attached to a wellhead assembly. Duhn Oil's QDF is designed to be secured to the casing head of a wellhead assembly by lock screws that engage a groove cut in the body of the drilling flange. Use of lock screws to secure wellhead components in the manner disclosed in Duhn Oil's QDF patent is a standard method for securing wellhead components in the oil and gas industry.

In or about Feburary 2001, Cameron employee John Rogers called Rex Duhn, Duhn Oil's president, and requested development of a wellhead isolation tool for Barrett Resources, an end user of Duhn Oil's products. Rogers conveyed that Barrett Resources desired a "frac mandrel" that would permit Barrett Resources to continue using Duhn Oil's existing wellhead components, including the W2 tubing heads, W92 casing heads, and lock screws. A frac mandrel is a wellhead isolation tool designed to protect a well's hydrocarbon production components from pressures entailed by fracturing operations, which exceed the pressure rating of conventional production components. Fracturing operations stimulate an existing well's production by introducing abrasive material into the well's producing regions at high pressure in order to create pathways for hydrocarbon extraction. The frac mandrel Rex Duhn set out to create after speaking to John Rogers ultimately culminated in United States Patent No. 6,920,925 ("'925 Patent").

After his conversation with John Rogers, Rex Duhn began working on an extension of Duhn Oil's QDF system that would provide Barrett Resources with a frac mandrel compatible with Duhn Oil's W2 and W92 products. However, the single set of lock screws employed in Duhn Oil's original QDF device proved to be insufficient for retaining the frac mandrel in a tubing head under high pressure. Rex Duhn sought assistance from Robert Meek, Duhn Oil's chief engineer. Ultimately, a secondary flange with a second set of lock screws was conceived that rendered the frac mandrel functional under the extreme pressures generated by the fracturing process.

Rex Duhn sent preliminary design drawings to John Rogers in order to obtain feedback from Rogers and Barrett Resources. Rogers provided suggestions that Duhn Oil endeavored to incorporate into the design. Final design drawings for a "QDF frac mandrel" were completed in May, 2001 and Duhn Oil began marketing the QDF frac mandrel to end users. Rogers left Cameron and joined Duhn Oil in May, 2001 to begin marketing Duhn Oil's QDF frac mandrel. Rogers was terminated from Duhn Oil in 2005 for cause.

The '925 Patent

Duhn Oil filed a provisional patent application for its QDF frac mandrel on February 19, 2002 listing Robert Meek and Rex Duhn as inventors. On February 19, 2003, Duhn Oil filed application number 10/363,070 ("070 Application"), which claimed priority to the provisional patent application filed in 2002. On May 16, 2003, Duhn Oil submitted a Petition to Make Special requesting expedited review of the '070 Application. The Petition to Make Special stated that Cameron was infringing at least some of the claims disclosed in Duhn Oil's patent application.

The Examiner initially rejected Duhn Oil's patent application as anticipated by prior art. In response, Duhn Oil added a clause to claim 1 referred to by the parties as "the wherein clause." The wherein clause is critical to the parties respective claims. Duhn Oil's application matured into United States Patent No. 6,920,925 ("the '925 Patent"), entitled "Wellhead Isolation Tool," on July 26, 2005. The '925 Patent is comprised of 88 claims.

The'925 Patent teaches a casing head coupled to a wellbore and a tubing head mounted over the casing head. The tubing head has a first radial flange extending from it at an upper end. A generally elongate annular member (the frac mandrel) is suspended concentrically within the tubing head and aligned with a production casing suspended below in the wellbore. The frac mandrel has a second radial flange extending from it. In some embodiments, the first flange extending from the tubing head and the second flange extending from the frac mandrel are fastened together.

All claims at issue in this action depend from claim 1 of the '925 Patent. Claim 1 specifies a wellhead assembly having various components as follows:

1. A wellhead assembly comprising: . a casing; . a first tubular member mounted over the casing; . a first tubular member flange extending from the first tubular member; . a generally elongate annular member ("frac mandrel") suspended in the first tubular member, said annular member having a first end portion extending above the first tubular member and a second end portion below the first end portion; . a secondary flange extending from the frac mandrel; . a plurality of fasteners fastening the secondary flange to the first tubular member flange; and . a production tubular member aligned with the frac mandrel, wherein an axial force acts on the generally frac mandrel and is reacted in both the first tubular member flange and the secondary flange.

Claim 1 identifies the components either by their location and/or their functionality. For example, the production tubular member is aligned with the annular member in such a way that an axial force acts on the annular member and such force is reacted in the first tubular member flange and the secondary flange to which it is attached.

The court has interpreted the critical "wherein" clause of claim 1 as follows:

[The "wherein" clause] requires that the wellhead assembly be in an environment where there is an axial force present and acting on the frac mandrel. Given that an axial force is present and acting on the frac mandrel, the wherein clause imports the functional limitation that said axial force be reacted in both the first tubular member flange and the secondary flange. The clause does not require that an axial force be applied by a user nor does it specify a method as to how the force is provided. This "wherein" clause also requires a "dual load path" -which means that there must be an independent force path (engagement) between the claimed "elongate annular member" (e.g., a "frac mandrel") and each of the two claimed flanges, which are the "first tubular member flange" (e.g., the upper flange of a "tubing head") and the "secondary flange." These two separate independent force paths (engagements) must each have contact with the frac mandrel, which provides for a transmission of the axial force from the elongate annular member to the first tubular member flange, and a separate transmission of the axial force from the elongate annular member to the secondary flange. (Doc. 660 at 75).

The Parties' Claims

Duhn Oil asserts that Cameron's Time Saver Wellhead ("TSW") frac mandrel infringes claims 2, 3, 5, 19, and 29 of the '925 Patent. Each of these claims depend from claim 1 and includes the "wherein" clause. Duhn Oil seeks damages and injunctive relief.

Cameron seeks a declaration that the '925 Patent is invalid for obviousness and anticipation. Cameron's obviousness claim is based on two prior art references: (1) U.S. Patent No. 6,289,993 ("'993 Patent"); and (2) a 1994 Catalogue ("'94 Catalogue") describing an "MTBS Tubing Hanger" offered for sale by Cameron. The '993 Patent is one of the U.S. Patents listed in the References Cited section of the '925 Patent. The '94 Catalogue was not before the Examiner.

Cameron also asserts that the '925 Patent is unenforceable due to Duhn Oil's inequitable conduct. Specifically, Cameron contends that Duhn Oil committed inequitable conduct by failing to name John Rogers as an inventor and by failing to disclose the '94 Catalogue to the Patent Office. Cameron also asserts that Rex Duhn is improperly listed as an inventor on the '925 Patent.

Jury Demand Confusion

The only jury demand properly submitted by either party is Plaintiff's demand for a jury trial on the limited issue of willful infringement. (See Doc. 424). The Third Amended Complaint ("TAC") provides: "Plaintiff hereby demands a trial by jury on the issue of whether Defendant's infringement is willful." (Doc. 424 at 9). Defendant never demanded a jury trial on any issue.

Prior to 2010, both parties expressed their understanding that the court would be the trier of fact. For example, on January 6, 2009, the court conducted a hearing during which the following exchange took place between the court and counsel:

THE COURT: ...[Whether] this specific instance...is...an example of non-infringement or infringement, that's going to be for the jury to determine. That's going to be a question of fact. And whether the pressures make a difference or not, it's going to be a question of fact. It is that. And so --

MR. DALY: One point, Your Honor, there is no jury demand in this case, so --THE COURT: There is no jury demand by either side?

MR. DALY: No.

MR. ROGERS: None by us either. You'll be the trier of fact, Your Honor.

MR. DALY: You'll be the trier of fact THE COURT: Now you have really ruined my day because in all the patent cases that we have tried in this Court, when they've gone to the federal circuit, quite frankly, and they -- we've had some adverse rulings, but every one of them has been affirmed. I believe there's four. And the bottom line was it was the jury who made the findings of fact. So that I didn't know.

MR. ROGERS: I appreciate that. I think I can close this issue out.

THE COURT: Maybe the Court is going to appoint an advisory jury to give me some help.

MR. ROGERS: I appreciate that, Your Honor. (Doc. 287 at 46-47).

Confusion regarding the scope of the jury trial arose in 2010 during formulation of the joint pretrial statement required by Local Rule 281(a)(2). E.D. Cal. R. 281. On August 25, 2010, Plaintiff's counsel emailed a draft joint pretrial statement to Defendant's counsel. Plaintiff's draft stated "Duhn has demanded a jury trial." (Doc. 682, Rogers Decl. Ex. A). Defendant's counsel responded to Plaintiff's counsel by emailing a modified draft joint pretrial statement on August 31, 2010. Defendant's draft joint pretrial statement changed the language regarding Plaintiff's jury demand to read "Duhn Oil has demanded a jury trial for its allegation of willful infringement." (Id., Ex. B) (emphasis added to reflect Defendant's modification). On September 1, 2010, Plaintiff's counsel emailed a second draft joint pretrial statement to Defendant's counsel which eliminated Defendant's changes so that the jury statement read "Duhn as demanded a jury trial." (Id., Ex. C). On September 2, 2010, Defendant's counsel emailed to Plaintiff's counsel a draft joint pretrial statement which combined the parties' respective statements regarding the jury demand:

Duhn contends that it has demanded a jury trial. Cameron contends that Duhn Oil has only demanded a jury for its willful infringement allegations and cites to Duhn Oil's Third Amended Complaint (Doc. No. 424). (Id. Ex. D). The jury demand language contained in Defendant's September 2, 2010 draft became the operative language submitted in the parties' joint pretrial statement. (Doc. 444). The joint pretrial statement was signed by counsel for both parties.

During the pretrial conference on September 13, 2010, the court noted the divergent contentions regarding the jury demand reflected in the joint statement and asked the parties to express their respective positions. The following exchange took place:

THE COURT: My sense is that on the infringement issues, you're entitled to jury. And on other issues, we're going to have a jury, we could have an advisory jury where there are factual findings. I find that that often is very helpful. And so what's the parties' view?

MR. ROGERS: The only jury demand in this case is the plaintiff has a demand for a jury on their singular issue of alleged willful infringement. As far as all the other issues, I believe we talked in the past about you wanting an advisory jury on the other issues.

MR. WHITELAW: Your Honor, we do not object. In fact, [sic] suggest that a jury sit on the factual issues for infringement because before you get to willfulness, you've got to find infringement. And I'd leave it to the discretion of the Court in terms of which --THE COURT: The damages is normally a jury triable issue as well.

MR. ROGERS: We understood, from our past hearings, that we would have advisory jury on -- that there would be a jury on all issues, that it would be as of -- as of the demand for the willful infringement issue and then advisory for all other issues.

THE COURT: Defendant has not demanded a jury. There will be a jury on willful infringement issues and other issues, to which the entitlement exists as a legal right. In all other respects, the jury shall be advisory.

(Doc. 465 at 14-15). No party expressed any objection to the scope of the jury trial announced by the court at the pretrial conference.

The court entered a Final Pretrial Order ("FPO") on September 29, 2010. (Doc. 468). The FPO provides:

II. Jury/Non-Jury Trial

1. Duhn contends that it has demanded a jury trial. Cameron contends that Duhn Oil has only demanded a jury for its willful infringement allegations and cites to Duhn Oil's Third Amended Complaint (Doc. No. 424).

2. Defendant has not demanded [sic] jury. There will be a jury trial on willful infringement issues and other issues to which the entitlement exists as a legal right. In all other respects, the jury shall be advisory. (Doc. 468 at 1-2). The FPO further provides:

The Final Pretrial Order shall be reviewed by the parties and any corrections, additions, and deletions shall be drawn to the attention of the court immediately. Otherwise, the Final Pretrial Order may only be amended or modified to prevent manifest injustice pursuant to the provisions of Fed. R. Civ. P. 16(e).

(Id. at 37). Neither party sought clarification, amendment, or modification of the FPO.

At the close of evidence, both parties moved for judgment as a matter of law on various issues pursuant to Federal Rule of Civil Procedure 50. Inter alia, Plaintiff moved for judgment as a matter of law on the issues of obviousness, anticipation, and inventorship. (Doc. 696 at 15-22). Defendant moved for judgment as a matter of law on infringement, inventorship, and damages, among other issues. (Id. at 28-40). The court denied certain of the parties motions on the record and took others under submission. The Jury's Verdict

A fourteen day jury trial commenced on January 12, 2011. On February 2, 2011, the jury returned verdicts finding Defendant liable for infringing claims 2, 3, 5, 19, and 29 of the '925 Patent and for contributory infringement regarding claims 2, 3, 5, and 29, but not claim 19. (Doc. 668). The jury found that Plaintiff is entitled to $5,909,974 in lost profit damages and $2,750,000 in lost royalties. The jury rejected Plaintiff's claims of inducing infringement and willful infringement and also rejected Defendant's inequitable conduct defenses.

During deliberations, the jury sought clarification of the court's instructions on independent and dependent claims. The jury asked the following question:

Can we have additional clarification on independent and dependent claims? There are different interpretations regarding claims. If an answer is yes/no on one claim, are all subsequent claims the same answer?

(Doc. 698 at 12). The court responded, in pertinent part:

There are two types of patent claims. Independent claims and dependent claims. An independent claim sets forth all of the requirements that must be met in order to be covered by that claim. Thus it is not necessary to look at any other claim to determine what an independent claim covers.

For example, claim 1 of the '925 patent is an independent claim. And so it stands alone. You don't have to look to any other part of the patent to determine what its requirements are. Claims 2, 3, 4, 5, 19 and 29 in the '925 patent are dependent claims, which depend directly or indirectly on claim 1. A dependent claim does not itself recite all the requirements of the claims, but refers to another claim for some of its requirements. In this way, the claim depends on another claim. A dependent claim incorporates all of the requirements of the claims to which it refers. And I think the parties will agree that all these dependent claims refer to claim 1...To determine what a dependent claim covers, it is necessary to look at both the dependent claim and any other claims to which it refers. (Id. at 17-18). Juror number three then asked a follow up question:

JUROR NUMBER THREE: do those instructions that you just gave regarding number 1, question number 1, also apply, and specifically the way that you designated how we are to approach 1 and 2...Do those also apply to questions 2, 3, 4, et cetera?

THE COURT: Yes. You are -- specifically you are to approach, in the verdict form, the finding on anticipation and the finding on obviousness, you approach that in the same manner. You go through and you analyze each one of those questions in relation to the test you have for anticipation or obviousness.

(Id. at 22).

Ultimately, the jury found that Defendant proved by clear and convincing evidence that claims 2, 3, 4, 5, 19, and 29 are invalid for obviousness, and that claims 2, 3, 4, 5, and 29 are invalid for anticipation. However, the jury found that claim 1 was not proven to be anticipated or obvious. Claim 1 is the independent claim from which claims 2, 3, 4, 5, 19, and 29 depend. After receiving the jury's verdicts on anticipation and obviousness, the court called a side bar in order to give the parties an opportunity to respond to the inconsistency in the jury's verdict. Neither party requested that the jury be sent back for further deliberations to resolve the inconsistency. Instead, at the parties' request, the court received the remainder of the jury's verdict. The court then discharged the jury and thanked them for their service.

III. DISCUSSION.

A. Scope of the Jury Trial

The parties dispute the scope of the jury trial. Plaintiff avers the jury's verdicts are advisory on all issues other than willful infringement. Defendant contends that all issues were submitted to the jury for binding determination with the exception of Defendant's equitable defenses.

1. The Seventh Amendment in Patent Infringement Actions

The Seventh Amendment right to jury trial applies in patent infringement actions for damages. E.g., Tegal Corp. v. Tokyo Electron Am., Inc., 257 F.3d 1331, 1339 (Fed. Cir. 2011) (discussing Gardco Mfg., Inc. v. Herst Lighting Co., 820 F.2d 1209, 1212 (Fed. Cir. 1987) and Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996)).*fn2

For purposes of the right to a jury trial in patent cases, it is inconsequential whether the parties are aligned in the conventional manner (patentee as plaintiff and accused infringer as defendant and invalidity counterclaimant) or in the manner that results when the accused infringer initiates the action as a declaratory judgment (accused infringer as plaintiff and patentee as defendant and infringement counterclaimant).

In re Tech. Licensing Corp., 423 F.3d 1286, 1288 (Fed. Cir. 2005) (citing In re Lockwood, 50 F.3d 966, 974-75 (Fed. Cir. 1995) vacated at 515 U.S. 1182 (1995)). The accused infringer or declaratory judgment counterclaimant is entitled to a jury trial if the infringement claim, as asserted by the patentee, would give rise to a jury trial. E.g., Tech. Licensing Corp., 423 F.3d at 1290.

Infringement and validity are legal issues that entail the right to a jury trial. See, e.g., Gardco, 820 F.2d at 1212; Lockwood, 50 F.3d at 980; Tech. Licensing Corp., 423 F.3d at 1290-91. The Seventh Amendment jury trial right does not attach to claims based in equity, such as the defense of inequitable conduct. E.g., Gardco, 820 F.2d at 1213 ("the defense of inequitable conduct is 'equitable in nature and thus does not give rise to the right of trial by jury'"). If factual issues common to both legal and equitable claims are involved in a single case, the legal claims must be determined by the jury prior to any final court determination of the equitable claims. Shum v. Intel Corp., 499 F.3d 1272, 1277 (Fed. Cir. 2008) (citing Dairy Queen, Inc. v. Wood, 369 U.S. 469, 479 (1962) and Beacon Theatres v. Westover, 359 U.S. 500, 508 (1959)). Where "substantial commonality" exists between the factual questions presented by legal and equitable claims, jury findings pertaining to the legal claims constrain the court's determination of equitable claims. E.g., Cabinet Vision v. Cabnetware, 129 F.3d 595, 600 (Fed. Cir. 1997) ("the facts underlying Cabnetware's inequitable conduct defense and its Walker Process counterclaim possess 'substantial commonality' so that, because the jury answered question 7, the Seventh Amendment constrains the court's equitable determination") (citing Gardco, 820 F.2d at 1212); Shum, 499 F.3d at 1277; Beacon Theatres, 359 U.S. at 508.

2. The Federal Rules of Civil Procedure

The Federal Rules of Civil Procedure preserve all jury trial rights under the Seventh Amendment and federal statutes. E.g., Craig v. Atlantic Richfield Co., 19 F.3d 472, 475 (9th Cir. 1994) (citing Fed. R. Civ. P. 38(a)). Rule 38(b)*fn3 proscribes the procedural requirements for demanding a jury trial:

On any issue triable of right by a jury, a party may demand a jury trial by:

(1) serving the other parties with a written demand--which may be included in a pleading--no later than 14 days after the last pleading directed to the issue is served; and

(2) filing the demand in accordance with Rule 5(d).

Fed. R. Civ. P. 38(b). A demand pursuant to Rule 38(b) is considered a demanded for a jury trial on all issues triable as of right unless the demand indicates that the demanding party only seeks a jury trial on specified issues. Rule 38(c) provides:

In its demand, a party may specify the issues that it wishes to have tried by a jury; otherwise, it is considered to have demanded a jury trial on all the issues so triable. If the party has demanded a jury trial on only some issues, any other party may--within 14 days after being served with the demand or within a shorter time ordered by the court--serve a demand for a jury trial on any other or all factual issues triable by jury. Fed. R. Civ. P. 38(c). Rule 38(c) presents a party seeking a jury trial with a choice: "either list specific issues for the jury to consider, or make a general demand, which will be deemed to cover all issues triable to a jury." Lutz v. Glendale Union High Sch., Dist. No. 205, 403 F.3d 1061, 1065 (9th Cir. 2005).*fn4 "A jury demand will be deemed to cover all issues only if it doesn't specify particular issues." Id. (emphasis added).

"A party waives a jury trial unless its demand is properly served and filed," Fed. R. Civ. P. 38(d), but courts must "indulge every reasonable presumption against waiver" and "accept jury demands that fall far short of the ideal," Lutz, 403 F.3d at 1064. Although there is a strong presumption against waiver of the right to a jury trial, in order to satisfy Rule 38's requirements and preserve the right to a jury trial, a jury demand be sufficiently clear to alert a careful reader that a jury trial is requested on an issue. See, e.g., id., see also Solis v. Los Angeles, 514 F.3d 946, 954 (9th Cir. 2008) (citing Lutz for the proposition that "because Solis's jury demand was 'sufficiently clear to alert' both the Defendants and the district court 'that a jury trial [wa]s requested,'" plaintiff was entitled to jury trial). Once a party has filed a proper jury demand pursuant to Rule 38, the trial on all issues encompassed in the party's Rule 38 demand must be by jury unless the parties stipulate to a non-jury trial or the court finds that there is no federal right to a jury trial on some or all of those issues. Fed. R. Civ. P. 39(a). Issues on which a jury trial is not property demanded must be tried by the court. Fed. R. Civ. P. 39(b).

Rule 39 provides two alternatives that permit cases to be tried to a jury notwithstanding the absence of a proper jury demand under Rule 38. First, Rule 39(b) authorizes district courts, on motion, to order a jury trial on any issue for which a jury trial might have been demanded. Id. A district court's discretion under Rule 39(b) is narrow and does not permit a court to grant relief when the failure to make a timely demand results from an oversight or inadvertence, E.g., Zivkovic v. S. Cal. Edison Co., 302 F.3d 1080, 1086-87 (9th Cir. 2002) (citations omitted).

Second, Rule 39(c) permits courts to try matters to the jury with the parties' consent. Rule 39(c) provides:

Jury Trial by Consent. In an action not triable of right by a jury, the court, on motion or on its own:

(1) may try any issue with an advisory jury; or

(2) may, with the parties' consent, try any issue by a jury whose verdict has the same effect as if a jury trial had been a matter of right, unless the action is against the United States and a federal statute provides for a non-jury trial.

Fed. R. Civ. P. 39(c). Several circuit courts of appeal have held that Rule 39(c) does not require express consent, and that failing to object to conduct of a jury trial constitutes implied consent sufficient to satisfy Rule 39(c). E.g., Bereda v. Pickering Creek Indus. Park, 865 F.2d 49, 52 (3rd Cir. 1988)("If one party demands a jury, the other parties do not object, and the court orders trial to a jury, this will be regarded as trial by consent" under Rule 39(c))(citing C. Wright & A. Miller, 9 Federal Practice and Procedure § 2333 (1971) and Stockton v. Altman, 432 F.2d 946, 949-50 (5th Cir. 1970), cert. denied, 401 U.S. 994, 28 L. Ed. 2d 532, 91 S. Ct. 1232 (1971)); Broadnax v. City of New Haven, 415 F.3d 265, 273 (2nd Cir. 2005) ("if the parties do not object, a non-jury claim may be tried and decided by a jury."); Pals v. Schepel Buick & GMC Truck, Inc., 220 F.3d 495, 501 (7th Cir. 2000) ("mutual implied consent supports the jury's authority to resolve issues that normally would be decided by the court"); Thompson v. Parkes, 963 F.2d 885, 886, 888 (6th Cir. 1992) (finding consent to try equitable claims to a jury under Rule 39(c) where parties' course of conduct and pretrial order indicated trial by jury). Although the court has not located published Ninth Circuit authority establishing that participation in a jury trial without objection is tantamount to consent under Rule 39(c), this result necessarily extends from binding Ninth Circuit precedent.

Pursuant to Ninth Circuit law, the procedural protections of Rules 38 and 39 are subject to waiver. See, e.g., Craig, 19 F.3d at 477 (citing Reid Bros. Logging Co. v. Ketchikan Pulp Co., 699 F.2d 1292, 1304 (9th Cir. 1983), cert. denied, 464 U.S. 916 (1983) for the "general proposition that a party's course of conduct may prevent it from relying on procedural protections in Rules 38 and 39")).*fn5 It is well settled that participation in bench trial without objection effects waiver of the jury trial right, e.g., White v. McGinnis, 903 F.2d 699, 703 (9th Cir. 1990) (en banc), notwithstanding the constitutional mandate to "indulge every reasonable presumption against waiver," Lutz, 403 F.3d at 1064. A fortori, where there is no risk to the venerable constitutional jury trial right hanging in the balance, participation in a jury trial without objection must effect waiver of the procedural protections afforded by Rules 38 and 39. See O2 Micro Int'l Ltd. v. Monolithic Power Sys., Inc., 399 F.Supp. 2d 1064, 1087 (N.D. Cal. 2005) (citing Thompson, 963 F.2d at 890 and Rule 39(c) for the proposition that court lacked power to treat jury's verdict on patent issues as advisory after case was submitted to a jury); Simonelli v. Univ. of Cal.- Berkeley, 2007 U.S. Dist. LEXIS 81634 * 8 (N.D. Cal. 2007) ("Where a party demands a jury trial on an issue that is not jury triable, the opposing party's failure to object may be deemed 'consent' to the jury") (citing Broadnax, 415 F.3d at 270); see also Pradier v. Elespuru, 641 F.2d 808, 811 (9th Cir. 1981) ("the parties are entitled to know at the outset of the trial whether the decision will be made by the judge or the jury."); Fed. R. Civ. P. 1 (Federal Rules of Civil Procedure "should be construed and administered to secure the just, speedy, and inexpensive determination of every action and proceeding").

3. The Final Pretrial Order

A final pretrial order supersedes all prior pleadings and controls the subsequent course and scope of the action. E.g., Rockwell Int'l Corp. v. United States, 549 U.S. 457, 475 (2007) (quoting Fed. Rule Civ. Proc. 16(e)). Claims, issues, defenses, or theories of damages not included in the pretrial order are waived even if they appeared in the complaint, and conversely, the inclusion of a claim in the pretrial order is deemed to amend any previous pleadings which did not include that claim. Id. (citation omitted). Because the pretrial order has the power to supercede pleadings with respect to the substantive claims advanced by the parties, id., it follows that the pretrial order also has the power to supercede the portions of the parties' pleadings setting forth jury demands, see, e.g., Pals, 220 F.3d at 501 (noting that if the court orders a trail to a jury and the parties do not object, both sides are deemed to consent to have the case decided by the jury and "the pleadings are deemed amended to give permission"); Bereda, 865 F.2d at 52 (noting that where court ordered trial to jury and neither party objected, jury's verdict was binding); see also Fed. R. Civ. P. 15(b) (permitting amendment of pleadings after trial to conform pleadings based on issued tried by implied consent). Parties are entitled to rely on the scope of the jury trial described in the pretrial order. Pradier, 641 F.2d at 811; see also Thompson, 963 F.2d at 886, 888.

Here, after the court discussed with the parties that the jury would decide al issues triable as of right to a jury, the FPO was drawn to so provide. The FPO contains an express provision that instructed any party that believed amendment to the FPO was necessary to make the appropriate motion. No party sought to amend the FPO. Although the FPO is not a model of clarity, the plain language and the parties' course of conduct establish its meaning beyond the shadow of a doubt.

In order to interpret the meaning of an ambiguous provision of a pretrial order, the court must first consider the plain language of the order. See, e.g., DP Aviation v. Smiths Indus. Aero. & Def. Sys., 268 F.3d 829, 842 (9th cir. 2001) (undertaking analysis of competing interpretations by first examining the language of the pretrial order and ultimately adopting most reasonable interpretation). Although the court's interpretation of the language employed in its own order is most authoritative, Lampkin v. Int'l Union, United Auto., Aero. & Agric. Implement Workers of America, 154 F.3d 1136, 1147 (10th Cir. 1998), the parties' course of conduct is also relevant to ascertaining the meaning of ambiguous portions of a pretrial order, see DP Aviation, 268 F.3d at 842 (evaluating parties' conduct at trial in construing the meaning of ambiguous language in pretrial order); accord Johnson v. Geffen, 294 F.2d 197, 199-200 (D.C. Cir. 1960) (same).

The plain meaning of the specific language employed in the FPO explicitly provides that this case was tried to a jury on all issues to which the Seventh Amendment jury trial right attaches, as the court intended and to which the parties assented. The FPO provides, in pertinent part:

1.Duhn contends that it has demanded a jury trial. Cameron contends that Duhn Oil has only demanded a jury for its willful infringement allegations and cites to Duhn Oil's Third Amended Complaint (Doc. No. 424).

There will be

2. a jury

Defendant trial has on not willful demanded [sic] jury. issues issues to which the entitlement infringement exists as a legal and right. other In all other respects, the jury shall be advisory. (Doc. 468 at 1-2) (emphasis added). After noting Defendant's contention that Plaintiff only demanded a jury trial on the issue of willful infringement and Plaintiff's assertion of a general jury demand, the FPO ordered a jury trial on willful infringement "and other issues to which the entitlement exists as a legal right." (Id.) (emphasis added). By ordering a jury trial on issues other than willful infringement, the FPO rejected Defendant's assertion that the jury trial should be limited solely to the issue of willful infringement and accepted Plaintiff's assertion of a general jury demand on all legal issues so triable.

Plaintiff now opportunistically reverses course and contends that, because the parties had already waived their jury trial rights on all other claims, the only issue "to which entitlement exist[ed] as a legal right" at the time the FPO was entered was willful infringement. Plaintiff argues that in light of the parties' respective waivers under the Federal Rules of Civil Procedure, the FPO should be construed as setting a jury trial only on the issue of willful infringement. Plaintiff's construction of the FPO is unreasonable and contrary to law, as it reads out the critical FPO phrase "and other issues to which the entitlement exists as a legal right," which is rendered completely superfluous. Plaintiff's post hoc construction of the FPO also negates the language in the FPO setting forth Plaintiff's implicit contention that it had made a general jury demand.

The plain meaning of the language employed by the FPO cannot be reconciled with Plaintiff's revisionist construction.

Plaintiff argues that the parties' course of conduct, the form of the jury instructions, and certain statements by the court support its construction of the FPO. With respect to the parties conduct, Plaintiff notes that during a pretrial conference on September 13, 2010, Defendant "fought to limit Duhn's jury demand to the singular issue of willfulness." (Doc. 681 at 7). The FPO issued on September 29, 2010, however. The fact that Defendant correctly noted the limited scope of the jury demand asserted in Plaintiff's TAC prior to issuance of the FPO is of no moment, as the FPO superceded the pleadings and all prior motions.

Contrary to Plaintiff's contentions, the conduct of the parties at trial was consistent with the plain meaning of the FPO, which set for jury trial "willful infringement issues and other issues to which the entitlement exists as a legal right." Critically, at the close of evidence, both parties moved for judgment as a matter of law pursuant to Rule 50 on issues that did not pertain to willful infringement, such as patent validity. As the Federal Circuit has noted, accepting the argument that a jury's verdict on validity issues is merely advisory after the parties have argued Rule 50 motions "would make charades of [such] motions...in patent cases," as Rule 50 motions apply only to binding jury verdicts. Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 985 n.5 (Fed. Cir. 1984); Fed. R. Civ. P. 50.

Plaintiff next contends that the jury verdict form suggests an advisory jury on validity issues because

The jury verdict form had two questions on invalidity:

Question 5 directed to anticipation, and Question 6 directed to obviousness. (See Verdicts of Trial Jury, pg. 6-7, attached as Ex. G to the Decl. of J. Whitelaw) Irrespective of how the jury found on these questions, the jury was instructed to continue making findings on Inventorship (Questions 7a and 7b), Inequitable Conduct (Questions 9a and 9b), Lost Profits (Questions 10a and 10b), and Reasonable Royalty (Question 11). Had the parties intended the jury to be binding on the issue of invalidity, there would be no reason to have the jury continue to these other Questions if the jury found all of the asserted claims to be invalid. Having the jury ...


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