United States District Court, N.D. California
ORDER ON POST-TRIAL MOTIONS RE: DKT. NOS. 484, 486,
NATHANAEL M. COUSINS United States Magistrate Judge
March 24, 2016, the jury returned a verdict in this patent
infringement case that Enplas Display Device Corporation
(“EDD”) willfully infringed the ’554 and
’209 patents, and awarded Seoul Semiconductor Company,
Ltd. (“SSC”) $4, 070, 000. The jury also found
that the patents were not invalid. After the trial, the Court
determined that claim 2 of the ’554 patent was not
invalid. The Court also ruled that EDD did not prove that the
’209 patent inventor, Dr. Pelka, engaged in inequitable
the parties each move for further post-trial relief. EDD
moves for judgment as a matter of law, a new trial, and to
alter the judgment. SSC moves for the Court to award enhanced
damages and attorneys’ fees. The Court finds that no
further relief is necessary. The Court DENIES EDD’s
motion. The Court concludes that although EDD willfully
infringed the patents, there is no evidence of egregious
behavior and this case does not warrant enhanced damages or
RENEWED MOTION FOR JUDGMENT AS A MATTER OF LAW
Federal Rule of Civil Procedure 50(b), a court may grant a
renewed motion for judgment as a matter of law if “the
court finds that a reasonable jury would not have a legally
sufficient evidentiary basis to find for the party on that
issue.” “A renewed motion for judgment as a
matter of law is properly granted ‘if the evidence,
construed in the light most favorable to the nonmoving party,
permits only one reasonable conclusion, and that conclusion
is contrary to the jury’s verdict.’”
Escriba v. Foster Poultry Farms, Inc., 743 F.3d
1236, 1242 (9th Cir. 2014) (quoting Pavao v. Pagay,
307 F.3d 915, 918 (9th Cir. 2002)); see also Old Town
Canoe Co. v. Confluence Holdings Corp., 448 F.3d 1309,
1314 (Fed. Cir. 2006) (“A motion for judgment as a
matter of law is properly granted only if no reasonable juror
could find in the non-movant’s favor.”).
jury’s verdict must be upheld if supported by
substantial evidence, even if contrary findings are also
possible. Harper v. City of Los Angeles, 533 F.3d
1010, 1021 (9th Cir. 2008). In considering the evidence, the
Court must draw all reasonable inferences in favor of the
nonmoving party, disregard all evidence favorable to the
moving party that the jury is not required to believe, and
ask whether the nonmoving party has presented sufficient
evidence to support the jury’s conclusion.
Id.; Escriba, 743 F.3d at 1242-43.
“[I]n entertaining a motion for judgment as a matter of
law, the court . . . may not make credibility determinations
or weigh the evidence.” Reeves v. Sanderson
Plumbing Prods., Inc., 530 U.S. 133, 150 (2000).
moves for judgment as a matter of law, for a new trial, and
relief from the judgment on (A) improper claim construction;
(B) infringement and invalidity verdicts; (C) the
jury’s finding of induced infringement; (D) the amount
of damages; (E) inequitable conduct; and (F) a handful of
moves for a new trial under Rule 59(a) because it argues that
the Court did not construe claims that were in dispute. Dkt.
No. 484 at 7-9. Specifically, EDD argues that the Court
failed to construe the terms “illumination coupler,
” “such that light rays which would otherwise
pass out of said waveguide are captured for propagation
between said top and bottom surfaces, ” “leaky,
” and “leakage, ” for the ’554
patent; and “around the perimeter of the
aperture” and “directing” for the
District of California Patent Local Rule 4-4 requires
litigants to identify all disputed terms, then jointly
identify the 10 most significant terms to be presented at the
Markman hearing. The Federal Circuit requires a
litigant to identify terms for claim construction before
post-trial motions: “As we have repeatedly explained,
litigants waive their right to present new claim construction
disputes if they are raised for the first time after
trial.” Lazare Kaplan Int’l, Inc. v.
Photoscribe Techs., Inc., 628 F.3d 1359, 1376 (Fed. Cir.
2010). In SanDisk v. Memorex Products, Inc., 415
F.3d 1278, 1292 (Fed. Cir. 2005), the Federal Circuit
affirmed the district court’s refusal to entertain
claim construction arguments made “after relevant
cut-off dates under [the Northern District of
California’s Patent Local Rules] and the trial
court’s scheduling order.”
requested claim construction of the term “illumination
coupler embedded in an interior region of said
waveguide” during the Markman hearing, and the
Court determined that construction was not necessary. Dkt.
No. 81 at 14. Prior to the Markman hearing, EDD
requested construction for the ’209 patent terms
“around the perimeter of the aperture” and
“directing light rays, ” but did not identify
these terms as significant. Dkt. No. 74. When the Court did
not include them in its Markman order, EDD never
renewed its request or clarified for the Court that these
terms were significant. Cf. Apple, Inc. v. Samsung Elecs.
Co., 932 F.Supp.2d 1076, 1079 (N.D. Cal. 2013) (finding
that Samsung had not waived construction of a term, noting
that “Samsung has continued to raise the issue, first
in invalidity contentions and later in arguing for a jury
instruction.”). Finally, EDD never identified the
’554 patent terms “such that light rays which
would otherwise pass out of said waveguide are captured for
propagation between said top and bottom surfaces, ”
“leaky, ” and “leakage, ” for the
Court or requested construction of them.
Court finds that EDD’s request is too late and DENIES
the motion for a new trial on the basis that the Court did
not construe the above terms.
Infringement and Invalidity Verdict
Court addresses the infringement and invalidity verdicts
together, as both are based on expert testimony. Each side
had one expert to discuss both infringement and invalidity.
SSC’s expert was Dr. Duncan Moore, and EDD’s
expert was Dr. Clifford Pollock. Both experts testified that
they were persons of ordinary skill in the art relevant to
the patents in suit. No party objected to the expert’s
qualifications to testify as to those topics.
expert testified fully that it was his expert opinion that
his side won on infringement and invalidity. Both SSC and EDD
walked their own expert and the jury through each element of
each claim and used demonstratives to emphasize that their
expert opined on all relevant aspects of all claims at issue.
As to invalidity, each expert testified about prior art and
the theories of invalidity consistent with his party’s
position. At times, opposing counsel was able to obfuscate an
expert’s opinion by forcing the expert to admit to the
possibility of a contradictory opinion. However, neither
expert omitted information necessary to a prima facie case of
infringement or invalidity.
the jury’s assessment of infringement and invalidity
required the jury to find one expert more credible than the
other. “[I]n entertaining a motion for judgment as a
matter of law, the court . . . may not make credibility
determinations or weigh the evidence.” Reeves,
530 U.S. at 150. The Court will not second-guess the
jury’s credibility determination. The jury’s
verdict that SSC proved by a preponderance of evidence that
EDD infringed the patents-in-suit, and that EDD did not prove
by clear and convincing evidence that the patents were
invalid, is supported by substantial evidence. EDD’s
motion for judgment as a matter of law is DENIED.
challenges the jury finding that it induced infringement,
arguing that EDD did not know its downstream users. Prior to
the start of trial, the Court ruled that SSC did not need to
prove that EDD knew its downstream users with specificity.
Dkt. No. 389 at 3.
Court previously ruled that while SSC must demonstrate direct
infringement, and in so doing, must identify a direct
infringer, SSC does not need to demonstrate that EDD knew of
that particular direct infringer. “Inducement can be
found where there is evidence of active steps taken to
encourage direct infringement, which can in turn be found in
advertising an infringing use or instructing how to engage in
an infringing use.” Takeda Pharm. v. West-Ward
Pharm., 785 F.3d 625, 630-31 (Fed. Cir. 2015). The case
law does not require proof that the induced infringer knows
of the direct infringement, or intends to induce a specific
infringer. See Joy Techs., Inc. v. Flakt, Inc., 6
F.3d 770, 774 (Fed. Cir. 1993) (finding that
“[l]iability for either active inducement of
infringement or contributory infringement is dependent upon
the existence of direct infringement.”)(emphasis
case law provides that an individual can be liable for active
inducement if they encourage direct infringement through an
advertisement or instruction booklet. Takeda, 785
F.3d at 630-31. These activities are directed at a general
audience of people-buyers, sellers, and users of the product.
Thus, the inducer does not need to have the intent to induce
a particular person or entity, but rather, can be liable for
encouraging direct infringement to the wider public, or a
class of people or entities. Id.
trial, SSC demonstrated that EDD knew its products would be
used in televisions, and EDD knew that some of those
televisions would likely be sold in the United States. Tr.
937-939. The Court finds that the jury’s determination
that EDD induced infringement in the United States is based
on substantial evidence.
moves for judgment as a matter of law under Rule 50(b),
arguing that SSC presented no evidence supporting their
damages request of $4, 000, 000 for the ’554 patent.
SSC’s expert, Julie Davis, testified about the
hypothetical negotiation between the parties for a license to
the two patents. EDD objected to Davis’ testimony in a
Daubert motion, which the Court rejected at that
time. Dkt. No. 281. EDD then moved to exclude Davis’
testimony based on infringement of “other Enplas
lenses” that were not part of this case. The Court
granted that request in part, but stated, “Consistent
with this Court’s prior rulings, Davis cannot assume
that infringement can be proven for the lenses not in this
case. However, Davis may present evidence that under a
lump-sum royalty negotiation, EDD would seek to cover all of
its potentially infringing products. As long as Davis’
ultimate damages determination is adequately adjusted to only
recover for those lenses in the case, her testimony is
permitted.” Dkt. No. 384 at 3.
testified that “if the license is limited only to the
accused lenses, I think the reasonable royalty for the
’554 patent is $500, 000, and for the ’209 patent
$70, 000.” Tr. 722: 3-5. However, Davis also testified
that if EDD wanted a freedom-to-operate license, which would
be the most pragmatic, “they would be willing to pay $2
to 4 million in order to ensure that they’d never have
to worry about testing these products and negotiating other
licenses for those products in the future.” Tr. 720:
22-25. EDD did not have a damages expert and did not present
any evidence to rebut Davis’ opinion. Thus, the Court
finds that Davis’ testimony complied with its prior
orders and that substantial evidence supported the
jury’s award of $4 million for the ’554 lens.
argues that the Court provided inadequate analysis in its
ruling that EDD could not prove Dr. Pelka’s inequitable
conduct. The Court issued an order describing its findings of
fact and conclusions of law. Dkt. No. 478. There, the Court
found that EDD failed to present sufficient evidence to
demonstrate inequitable conduct on both the materiality and
intent elements. Both elements must be met by clear and
convincing evidence in order to prove inequitable conduct and
for the Court to award the extraordinary remedy of the
unenforceability of the ’209 patent. The Court is not
persuaded by EDD’s arguments that EDD should be
entitled to new findings or a new hearing.
argues that the verdict form is inconsistent with controlling
law because it did not provide a claim-by-claim finding for
direct infringement. Dkt. No. 447. The Court finds this
argument unpersuasive because the jury instructions require
the jury to find both direct and induced infringement on each
claim for each product. Dkt. No. 441 at 10-12.
EDD argues that it was unfairly blocked from rebutting
“other lenses” evidence. The Court dealt with
this issue extensively prior to the start of trial and made
evidentiary rulings during trial to remain consistent with
its rulings, while fairly giving each party an opportunity to
present its narrative. Dkt. Nos. 280, 384, 388. The Court is
not persuaded that its rulings deprived EDD of a fair trial.
Rule 60 and 59(e) motion ...