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Fujifilm Corporation v. Motorola Mobility LLC

United States District Court, N.D. California

June 24, 2015



WILLIAM H. ORRICK, District Judge.

On June 16, 2015, the parties filed a Joint Status Report concerning various issues that remain unresolved following entry of the jury verdict in the patent infringement trial held in this case. See Dkt. No. 343 ("Rpt."). This order addresses each issue below.


"Inequitable conduct is an equitable defense to patent infringement that, if proved, bars enforcement of a patent." Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1285 (Fed. Cir. 2011). To prevail on the defense, the accused infringer must prove that the patent applicant "misrepresented or omitted material information with the specific intent to deceive the PTO." Id. at 1287. "The accused infringer must prove both elements - intent and materiality - by clear and convincing evidence." Id.

Motorola concedes that, in light of the jury's finding of no invalidity under 35 U.S.C. ยง 102(f), it cannot satisfy the materiality element of its inequitable conduct defense. Rpt. at 1. It states that I may rule on the defense without the introduction of additional evidence. Id. Fujifilm agrees. See Rpt. at 1-2.

I will issue a decision on inequitable conduct in conjunction with a decision on laches, discussed below. The parties shall not submit additional briefing or evidence on inequitable conduct.


The equitable defense of laches may bar a patentee's claim for pre-suit damages. A.C. Aukerman Co. v. R.L. Chaides Const. Co., 960 F.2d 1020, 1028 (Fed. Cir. 1992). "[A]pplication of the defense... is committed to the sound discretion of the district court." Id. at 1032. A defendant seeking to invoke the defense must prove two elements: (1) that the patentee "delayed filing suit for an unreasonable and inexcusable length of time from the time [it] knew or reasonably should have known of its claim against the defendant;" and (2) that "the delay operated to the prejudice or injury of the defendant." Id. A presumption of laches arises "upon proof that the patentee delayed filing suit for more than six years after actual or constructive knowledge of the defendant's alleged infringing activity." Id. at 1035-36.

Motorola asserts laches as a defense to infringement of the 763 patent, the one patent in suit that the jury found valid and infringed. To adjudicate the defense, Motorola proposes a short evidentiary hearing at which it would require no more than thirty minutes and would call only one witness. Rpt. at 2. Motorola further proposes that within ten days of the evidentiary hearing, the parties would submit proposed findings of fact and conclusions of law. Id.

Fujifilm objects to this proposal on several grounds, including that: (1) Motorola has already exhausted its allotted eighteen hours of trial time; (2) the one witness that Motorola intends to offer in support of its laches defense, David Yen, is not a technology expert (and thus, according to Fujifilm, cannot possibly provide testimony sufficient to establish that the relevant Motorola product infringes the 763 patent) and was not disclosed as a laches witness;[1] (3) the parties already submitted proposed findings of fact and conclusions of law on the defense, "so additional submissions on [the] issue would be redundant;" and (4) more generally, the defense "plainly [has] no merit" and should be summarily rejected on this ground. Rpt. at 4-5.

I tentatively am inclined, based on the argument in the Joint Status Report, to find that Yen was not disclosed as a laches witness and to prohibit him from testifying in support of the defense. The boilerplate description of his testimony quoted in footnote 1 above is hardly sufficient. However, if Motorola wishes to file a brief of ten pages or less that explains what previously disclosed evidence regarding laches it intends to produce and why Yen is an appropriate laches witness, procedurally and substantively, it may do so on or before July 1, 2015. Fujifilm may respond with a brief of similar length on or before July 8, 2015. There will be no reply.


To prove willful infringement, "a patentee must show by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent." In re Seagate Tech., LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007). "If this threshold objective standard is satisfied, the patentee must also demonstrate that this objectively defined risk... was either known or so obvious that it should have been known to the accused infringer." Id. A willful infringement determination thus "requires a two-pronged analysis entailing separate objective and subjective inquiries." Powell v. Home Depot U.S.A., Inc., 663 F.3d 1221, 1236 (Fed. Cir. 2011). The objective inquiry is question of law for the court, while the subjective inquiry is a fact question for the jury. Bard Peripheral Vascular, Inc. v. W.L. Gore & Associates, Inc., 682 F.3d 1003, 1007-08 (Fed. Cir. 2012).

The jury in this case was given the subjective prong and returned a verdict of no willful infringement with respect to each of the asserted claims. Dkt. No. 337 at 9. Motorola nevertheless asks that I now rule on the objective prong "to avoid the potential for multiple, fractured decisions on willfulness." Rpt. at 6. Motorola explains that if Fujifilm succeeds in overturning the jury's findings on the subjective prong, then the matter will return to this Court for a determination on the objective prong - unless the determination is made now. Id. Fujifilm responds that ...

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