United States District Court, C.D. California, Southern Division
ORDER RE: POSTTRIAL MOTIONS
DOUGLAS F. MCCORMICK UNITED STATES MAGISTRATE JUDGE
matter is before the Court on the parties' posttrial
motions. Defendant Campbell Company (“Campbell”)
moves for judgment as a matter of law. Plaintiff Polara
Engineering, Inc. (“Polara”) moves for a
permanent injunction, a judgment of willfulness and an award
of treble damages, a finding of exceptional circumstances and
a corresponding award of attorney's fees, and an award of
supplemental damages, prejudgment interest, and postjudgment
filed this patent-infringement suit against Campbell on
January 2, 2013. Dkt. 1. Polara, a manufacturer of accessible
pedestrian signal systems and pedestrian push buttons,
alleged that Campbell was infringing on Polara's United
States Patent No. 7, 145, 476 (the “'476
Patent”). Id. at 2. The '476 Patent,
issued in December 2006, was for a “2-wire push button
station control system for a traffic light controlled
intersection.” Id. at 3. Polara alleged that
Campbell, a manufacturer of traffic-industry products, had
developed an “Advisor Advanced Accessible Pedestrian
Station, ” or “AAPS, ” that infringed the
'476 Patent. Id.
moved for summary judgment of infringement of Claims 1
through 4 of the '476 Patent. Dkt. 87. Claim 1 recites:
control system by which vibro-tactile messages are provided
to alert pedestrians when to cross a traffic light controlled
intersection, said control system comprising:
at least one push button station located at the traffic light
controlled intersection to be crossed by pedestrians, said
push button station including a push button head that is
depressed by the pedestrians and message generating means
adapted to cause said push button head to vibrate to provide
a tactile indication to a visually impaired pedestrian when
to cross the intersection; and
a control unit that is responsive to the depression of the
push button head of said push button station to transmit to
the push button station both power and digital data signals
over a single pair of wires by which to power and control the
operation of said message generating means.
Tr. Exh. 9 at 11. Claim 2 recites the control system
described in Claim 1 and further provides that “at
least one push button station also includes a microcontroller
to receive the power and digital data signals from said
control unit, said microcontroller providing output signals
to control the operation of said message generating
means.” Id. Claim 3, in turn, is dependent on
Claim 2, and further requires that “said message
generating means of said at least one push button station
includes a vibration driver connected to said microcontroller
to cause said push button head to vibrate and thereby provide
said tactile indication to the visually impaired pedestrian
that it is safe to cross the intersection.”
Id. Claim 4 recites the control system described in
Claim 2, “wherein said message generating means of said
at least one push button station includes a sound chip in
which prerecorded messages are stored and from which an
audible indication is provided to the visually impaired
pedestrian whether” it is safe to cross the
judge originally assigned to this case-United States District
Judge Cormac J. Carney-found that Campbell's AAPS
infringed Claims 1 through 4 of the '476 Patent, and that
Polara was thus entitled to partial summary judgment on the
issue of infringement as to those claims. Dkt. 155. With
trial remaining on damages, Polara's willfulness claim,
and Campbell's invalidity and unenforceability defenses,
the parties consented to this Court's jurisdiction. Dkt.
383; see 28 U.S.C. § 636(c).
trial began on June 21, 2016. See Dkt. 413. After
seven days of jury selection, testimony, and argument, the
jury returned a special verdict on June 30, 2016.
See Dkt. 440. The jury found that Campbell had not
shown that Claims 1 through 4 of the '476 Patent were
invalid. Id. at 2-3. The jury also found that Polara
had not proved that it was entitled to lost profits, but it
awarded damages of $412, 926 based on a 15 percent royalty
rate and total sales of $2, 752, 842. Id. at 4. The
jury found that Campbell had willfully infringed the '476
Patent. Id. Finally, the jury made an advisory
finding that Polara had not engaged in inequitable conduct
before the Patent and Trademark Office (“PTO”)
that rendered the '476 Patent unenforceable. Id.
Campbell's Motion for Judgment as a Matter of
moves for judgment as a matter of law, arguing that: (1) the
'476 Patent is invalid because it was in public use for
more than one year before a patent application was filed; (2)
Claims 1 through 4 were obvious in light of the prior art;
(3) the '476 Patent is invalid because it was described
in publications more than one year before Polara filed the
patent application; and (4) Campbell did not act willfully in
infringing the '476 Patent. Dkt. 450 at 1-56, 66-82.
Standard of Review
Rule of Civil Procedure 50 permits a court to grant judgment
as a matter of law “when the evidence permits only one
reasonable conclusion and the conclusion is contrary to that
reached by the jury.” Ostad v. Or. Health Scis.
Univ., 327 F.3d 876, 881 (9th Cir. 2003). If substantial
evidence supports the jury's verdict, the court should
deny a motion for judgment as a matter of law. Wallace v.
City of San Diego, 479 F.3d 616, 624 (9th Cir. 2007) (as
amended); Callicrate v. Wadsworth Mfg., Inc., 427
F.3d 1361, 1366 (Fed. Cir. 2005). “Substantial evidence
is such relevant evidence as reasonable minds might accept as
adequate to support a conclusion even if it is possible to
draw two inconsistent conclusions from the evidence.”
Maynard v. City of San Jose, 37 F.3d 1396, 1404 (9th
Cir. 1994) (as amended). A court “must view the
evidence in the light most favorable to the nonmoving party .
. . and draw all reasonable inferences in that party's
favor.” E.E.O.C. v. Go Daddy Software, Inc.,
581 F.3d 951, 961 (9th Cir. 2009) (citation omitted,
alteration in original). Neither a “mere
scintilla” of evidence nor pure speculation is
sufficient to sustain a verdict for the prevailing party.
See Lakeside-Scott v. Multnomah Cty., 556 F.3d 797,
802-03 (9th Cir. 2009). And because a post-verdict Rule 50(b)
motion is “a renewed motion, ” it is
“limited to the grounds asserted in the
pre-deliberation Rule 50(a) motion.” Go Daddy,
581 F.3d at 961.
initial matter, Polara argues that “[b]ecause Campbell
never raised any arguments regarding patent invalidity in its
pre-verdict Rule 50(a) motion, Campbell has waived those
arguments.” Dkt. 461 at 24. The Court disagrees.
Campbell rested its case, Polara moved for judgment on
Campbell's claim that the '476 Patent was invalid
because of Polara's inequitable conduct. 6 Tr.
123-26. Polara also moved for judgment on
Campbell's “prior sale or offer for sale” (or
“on-sale” bar), “experimental use, ”
“prior use, ” and anticipation and obviousness
defenses. Id. at 127. Before hearing argument from
the parties on Polara's motions, the Court stated:
I think it's perfectly appropriate for me to, even just
on the basis of hearing those potential arguments, to tell
you that I am not going to -- you've made it at the
appropriate time, so you've reserved the ability to argue
it after a jury verdict.
Id. The Court also indicated that it would defer
ruling on the experimental use, obviousness, and anticipation
issues. Id. The Court did hear argument from
Campbell regarding the on-sale bar issue. See id. at
subsequently indicated that it wanted to “bring a
motion pursuant to Rule 50 concerning the claim of
willfulness.” Id. at 135. After hearing
argument from Polara, id. at 137-39, the Court
“den[ied] the Rule 50 motion with respect to the
willfulness argument, ” id. at 139. The Court
I find that there's sufficient evidence of contested
issues of fact on experimental use and on the obviousness and
anticipation doctrines as related to the [prior art] devices
to put those issue[s] to the jury. I deny Rule 50 motions as
I am also going to deny the Rule 50 motion as to the
inequitable conduct defense. I find that there are issues of
fact both with respect to the defendant's conduct as well
as the intent to deceive or mislead sufficient to take the
issue to the jury. . . .
Id. at 139-40. The Court subsequently granted
Polara's Rule 50 motion as to the on-sale bar because
“no reasonable jury could conclude that the evidence
has shown that the claimed invention was subject to a
commercial offer for sale on or before that date.” 7
Tr. 6. The Court also noted that Campbell was left with two
statutory bar arguments: that over a year before the patent
application was filed, the claimed invention was (1)
described in a publication and (2) used openly and
same claims or issues on which judgment as a matter of law is
sought under Rule 50(b) must have been raised in a
pre-verdict motion for judgment under Rule 50(a).
See Fed.R.Civ.P. 50(b), Adv. Comm. Notes (1991
Amend.); see also Go Daddy, 581 F.3d at 961
(“Because it is a renewed motion, a proper post-verdict
Rule 50(b) motion is limited to the grounds asserted in the
pre-deliberation Rule 50(a) motion.”). The Ninth
Circuit has explained that this rule limitation serves two
purposes. First, the rule “preserves the sufficiency of
the evidence as a question of law, allowing the district
court to review its initial denial of judgment as a matter of
law instead of forcing it to ‘engage in an
impermissible reexamination of facts found by the
jury.'” Freund v. Nycomed Amersham, 347
F.3d 752, 761 (9th Cir. 2003) (quoting Lifshitz v. Walter
Drake & Sons, Inc., 806 F.2d 1426, 1428-29 (9th Cir.
1986)). Second, it ensures that the court and the parties are
put on notice of “any alleged deficiencies in the
evidence at a time when the opposing party still has an
opportunity to correct them.” Id.
courts construe strictly the requirement that a motion be
made after a case-in-chief, they are generally more liberal
about what suffices as a motion for a directed verdict after
the close of all the evidence.” Reeves v.
Teuscher, 881 F.2d 1495, 1498 (9th Cir. 1989). Thus,
Rule 50(b) “may be satisfied by an ambiguous or
inartfully made motion for a directed verdict or by an
objection to an instruction for insufficient evidence to
submit an issue to the jury.” Id. In
Reeves, for example, the Ninth Circuit found that
the defendants properly preserved a Rule 50(b) motion where
the trial court interrupted their argument and told them to
renew their motion after the jury's verdict. Id.
here, the Court elected to “withhold argument”
until after Polara had stated the bases for its Rule 50(a)
motion, and deferred argument as to the experimental use and
the obviousness and anticipation issues until after the
jury's verdict. 6 Tr. 127. The Court did hear argument
from both parties as to the on-sale bar, see id. at
128, 130-33, but informed Campbell that it did not
“have to be heard now” regarding the
inequitable-conduct issue and could brief that issue
post-verdict, see id. at 129-30. As such, the Court
and the parties understood the bases for any Rule 50(a)
motion regarding patent invalidity, and the Court did not
hear oral argument from the parties on the issues that it
found were properly submitted to the jury. The Court
therefore finds that Campbell is not barred from challenging
the jury's invalidity findings in a Rule 50(b) motion.
jury found that Campbell failed to prove that the '476
Patent is invalid because it was in public use for more than
one year before Polara filed the patent application. Campbell
moves for judgment as a matter of law on this invalidity
theory. Dkt. 450 at 30-46. Because substantial evidence shows
that Polara's early use was experimental use necessary to
ensure that its invention would work for its intended
purpose, Campbell's motion is denied.
entered the accessible pedestrian signal (“APS”)
system market with an eight-wire system called the Navigator.
2 Tr. 22-27. Because many intersections did not have
the wiring necessary to support an eight-wire device,
installation was difficult and labor-intensive. Id.
at 26-27. Leslie Beckwith, a design engineer for Polara,
testified that he and another Polara engineer, Randy Cruz,
began discussing a two-wire version of the Navigator in late
2000 or early 2001. 3 Tr. 80-81. John McGaffey, Polara's
president and owner, testified that it took Polara
“about three years” to develop a two-wire APS
system. 2 Tr. 32. They “did considerable testing in the
lab, ” 3 Tr. 80, and in Polara's “parking lot
in the back, ” 2 Tr. 35-36, to make sure the first
prototype worked. Because the first device was “a
little bit cobbled together, ” Polara then designed
something “with a little more permanent
construction” that could be installed on the street. 3
Tr. 80. McGaffey also testified that the device needed to be
“tested on live intersections-and not just one
intersection, it need[ed] to be tested on multiple because
every intersection . . . has different equipment, different
challenges and problems that it has to overcome.” 2 Tr.
January 2002, McGaffey instructed Polara's office manager
to send a letter to Mark Miller, the traffic engineer for the
City of Fullerton, requesting permission to install a
prototype system at the intersection of Gilbert Street and
Commonwealth Avenue. Id. at 37-38; 3 Tr. 60-63; Tr.
Exh. 193. The letter explained that the identified
intersection was close to Polara's plant, which would
allow for daily monitoring “during the test
phase.” Tr. Exh. 193. Polara also represented that it
“would take full responsibility for installing,
maintaining and deinstalling the equipment.”
the prototype system was installed at the Gilbert and
Commonwealth intersection, Polara noticed that “it
wasn't functioning correctly, ” 2 Tr. 41, because
the communication between the control unit and push-button
station was “not reliable, ” 3 Tr. 81. Polara
used an oscilloscope to measure the data signal and learned
that “a lot of electrical noise” was affecting
the signal; Polara uninstalled the system that same day.
Id. at 82; see 2 Tr. 41-42. Beckwith and
Cruz revised the device's transmitting and receiving
circuitry to make it “much more resistant to external
sources of interference.” 3 Tr. 83-84. The process took
“a few months” because they conducted “a
variety of experiments in the lab” before they were
satisfied that the device could “be used on the
street.” Id. at 84. Polara then installed the
revised system at the same intersection. Id. at
84-85; 2 Tr. 42. Polara monitored the device on a daily
basis-initially twice a day-to see if “it was
performing as it was supposed to.” 2 Tr. 42-43; see
also 3 Tr. 85-86. At “some point, ” Polara
became satisfied that the device was performing as it should.
2 Tr. 43.
next installed the same product at the intersection of
Nutwood Avenue and State College Boulevard in Fullerton.
Id. at 44; 3 Tr. 86-87. Polara selected this
intersection because it was larger than the one at Gilbert
and Commonwealth and “had a much higher pedestrian
traffic flow, which meant the buttons would get pushed on a
much higher volume.” 2 Tr. 44; see also 3 Tr.
87. Right after installation, Polara observed a shortcoming
in the way the digital-data signal was being communicated. 3
Tr. 87-88. Polara modified the circuitry inside the prototype
to adjust the sensitivity of the receiving circuit.
Id. at 88-89. Polara was able to make this
modification without uninstalling the system, id. at
89, and McGaffey characterized it as a “minor
adjustment, ” 2 Tr. 45. Polara's employees visited
the intersection several times to test the system's
performance, sometimes using an oscilloscope or other device.
3 Tr. 89-90. The prototype remained at Nutwood and State
College from fall of 2002 to fall of 2003, and Polara
“continued to monitor it and consider it a test
intersection.” 5 Tr. 181-82.
also “felt that it was imperative” to test the
device in a “wet environment” because
“water can cause all kinds of problems with electronic
equipment.” 2 Tr. 46. The City of Burnaby, Canada,
which “got a lot of rain” and snow, was
“willing to test a system.” Id. at
46-47. McGaffey testified that the weather was “a very,
very significant factor” in choosing to test the device
in Canada. Id. at 47. Likewise, Beckwith testified
that testing in a wet and cold environment “was very
important.” 3 Tr. 91. The City of Burnaby arranged for
Cobra Electric to install and monitor the test system. 2 Tr.
47. Because Polara did not have control over all of the
equipment, it had both entities sign a confidentiality
agreement. Id. at 47-49; Tr. Exh. 205.
Polara became satisfied that the two-wire APS system was
working “even in the harsher conditions of Canada,
” it decided to announce the release of the product at
an industry conference in August 2003. 2 Tr. 49. Polara began
selling its two-wire Navigator in late September 2003.
Id. at 49-51; see Tr. Exh. 203.
35 U.S.C. § 102(b), a patent is invalid if “the
invention was . . . in public use or on sale in this country
 more than one year prior to the date of the application
for patent in the United States.” 35 U.S.C. §
102(b). The public use bar applies if the
invention is “ready for patenting” and in
“public use.” Invitrogen Corp. v. Biocrest
Mfg., L.P., 424 F.3d 1374, 1379 (Fed. Cir. 2005).
Evidence of experimental use, even if public, may mean that
the bar does not apply. EZ Dock v. Schafer Sys.,
Inc., 276 F.3d 1347, 1351 (Fed. Cir. 2002); see also
Pfaff v. Wells Electronics, Inc., 525 U.S. 55, 64 (1998)
(“[A]n inventor who seeks to perfect his discovery may
conduct extensive testing without losing his right to obtain
a patent for his invention-even if such testing occurs in the
public eye. The law has long recognized the distinction
between inventions put to experimental use and products sold
is experimental if it is designed to “(1) test claimed
features of the invention or (2) to determine whether an
invention will work well for its intended purpose.”
Clock Spring, L.P. v. Wrapmaster, Inc., 560 F.3d
1317, 1327 (Fed. Cir. 2009). The Federal Circuit has outlined
certain objective factors that may be instructive when
determining experimental use, including: (1) the need for
public testing; (2) the inventor's amount of control over
the experiment; (3) the nature of the invention; (4) the
length of the test period; (5) whether payment was made; (6)
whether there was a secrecy obligation; (7) whether records
of the experiment were kept; (8) who conducted the
experiment; (9) the degree of commercial exploitation during
testing; (10) whether the invention reasonably required
evaluation under actual conditions of use; (11) whether
testing was systematically performed; (12) whether the
inventor continually monitored the invention during testing;
and (13) the nature of contacts made with potential
customers. Id. at 1327.
filed its initial application on August 5, 2004. 3 Tr. 12.
The Court therefore looks at public use of the '476
Patent before August 5, 2003. According to Campbell, the
two-wire device embodying the '476 Patent was in public
use as of early 2002, when it was installed at the
intersection of Gilbert and Commonwealth. Campbell reasons
that by that time, the invention had been reduced to practice
because a prototype had operated successfully in Polara's
parking lot. See Dkt. 450 at 32-34; Dkt. 481 at 5-9.
does not deserve judgment as a matter of law on the
public-use bar. At Campbell's request, see 6 Tr.
7, the jury was instructed on the 13 factors identified by
the Federal Circuit in Clock Spring, see 7
Tr. 70. Polara produced substantial evidence to support a
jury finding in its favor on these factors.
jury heard testimony on the nature of the invention and the
need for public testing and evaluation under actual
conditions of use. Even though the prototype worked in
Polara's parking lot, Polara needed to test the device on
live intersections because it was “a life safety
device, ” and “the last thing” Polara
wanted was “to put a device on an intersection
that's not been thoroughly vetted and potentially have a
blind person get the wrong message and walk out in front of
the cars and get hit.” 2 Tr. 36. The jury also heard
that an APS system must be capable of enduring different
weather conditions, volumes of pedestrian traffic, and
electrical-noise interference. See 2 Tr. 43-45; 3
Tr. 91. Polara introduced testimony that most intersections
have underground wiring. See 2 Tr. 28-30, 207. The
'476 Patent specification expressly contemplates use at
actual “traffic light controlled intersection[s]”
and the use of “existing pairs of underground wires
over which power and data signals are transmitted.” Tr.
Exh. 9 at 1, 7. The summary states that the “pairs of
wires . . . are, in the preferred embodiment, the existing
underground wires that were previously installed for the
purpose of connecting the . . . push buttons to a traffic
light control cabinet.” Id. at 7.
presented evidence on other Clock Spring factors.
Fullerton did not pay for the installations at its
intersections; indeed, Polara removed the device at the end
of the test period. See 2 Tr. 39; 5 Tr. 181-82;
see also Tr. Exh. 193. Polara retained control over
the device; Fullerton merely opened the traffic cabinet so
that Polara could install it. 2 Tr. 49. Polara engaged in
little if any commercial exploitation of its new two-wire
device during the testing period, instead waiting until the
completion of testing in Canada to unveil the device at an
August 2003 trade show. 2 Tr. 49, 95.
points out that Polara produced no records reflecting its
testing, did not have confidentiality agreements with
Fullerton employees, and made no modifications to the device
after the early stages of testing at the first Fullerton
intersection. While this evidence may have been inconsistent
with experimental use, it was the jury's job to weigh the
factors and make a determination. Polara presented
substantial evidence of experimental use, and the Court
cannot second-guess the jury's determination under Rule
also contends that Polara's testing was for commercial
development, not experimental use, pointing to Polara's
testing of how the device operated through underground wires,
under harsh weather conditions, in large or busy
intersections, within range of other electrical devices, and
in areas where other conduits are run. Dkt. 481 at 13. The
testing the durability of the digital-data signal related to
the invention's claimed features. “Experimentation
evidence includes ‘tests needed to convince [the
inventor] that the invention is capable of performing its
intended purpose in its intended environment.'”
EZ Dock, 276 F.3d at 1352 (alteration in original)
(quoting Gould Inc. v. United States, 579 F.2d 571,
583 (Ct. Cl. 1978)); see also Manville Sales Corp. v.
Paramount Sys., Inc., 917 F.2d 544, 551 (Fed. Cir. 1990)
(“When durability in an outdoor environment is inherent
to the purpose of an invention, then further testing to
determine the invention's ability to serve that purpose
will not subject the invention to a [public use]
bar.”). In EZ Dock, for example, two inventors
designed a floating dock made of polyethylene and installed
one for a customer in a location that experienced
“heavier boat traffic and more turbulent water
flow.” 276 F.3d at 1349. One of the inventors testified
that the purpose of the sale was to see how the dock would
hold up under more turbulent water conditions. Id.
at 1353. The Federal Circuit held that a reasonable jury
could find that the sale of the dock was for experimental
rather than commercial development because “floating
docks, by their nature, must endure all kinds of water
conditions, including choppy water created by weather and
boating.” Id. Here, the evidence supported the
jury's finding that an APS system must work in a variety
of conditions, such as inclement weather, various pedestrian
volumes, and environments with different levels of electrical
substantial evidence supports the jury's rejection of
Campbell's public-use defense because Polara showed that
installing the device in Fullerton was an experimental use.
Campbell's motion for judgment as a matter of law on
public use is therefore denied.
jury found that Campbell failed to prove that Claims 1
through 4 were either anticipated or obvious. Campbell now
renews its motion for judgment as a matter of law that Claims
1 through 4 were obvious in light of the prior art, including
United States Patent No. 4, 851, 836
(“Wilkinson”). Dkt. 450 at 54-60. Because the
jury relied on substantial evidence to reach its conclusion
on the factual issues underlying obviousness, and because the
jury's ultimate conclusion was correct as a matter of
law, the Court denies Campbell's motion.
patent is obvious and therefore invalid “if the
differences between the subject matter sought to be patented
and the prior art are such that the subject matter as a whole
would have been obvious at the time the invention was made to
a person having ordinary skill in the art to which said
subject matter pertains.” 35 U.S.C. § 103.
is a question of law based on underlying factual findings.
Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
688 F.3d 1342, 1356-57 (Fed. Cir. 2012). The Court must
presume that the jury resolved the underlying factual
disputes in Polara's favor and leave those presumed
findings undisturbed if they are supported by substantial
evidence. Id. The Court then examines the jury's
ultimate legal conclusion de novo to see whether it is
correct in light of the jury's presumed factual findings.
Id. at 1357.
underlying factual findings are: (1) the scope and content of
the prior art; (2) the differences between the claims and the
prior art; (3) the level of ordinary skill in the art; and
(4) any relevant secondary considerations, such as commercial
success, long felt but unsolved needs, and failure of others.
KSR Int'l Co. v. Teleflex Inc., 550
U.S. 398, 406 (2007). The Court must consider all four of
these factors before reaching a conclusion. Kinetic,
688 F.3d at 1360. At all times, the burden is on Campbell to
establish by clear and convincing evidence that the patent is
party requested that the jury answer any special
interrogatories. The obviousness portion of the verdict form
asked whether Campbell had proven, by clear and convincing
evidence, that any of Claims 1 through 4 were invalid due to
obviousness. See Dkt. 440 at 2. As to each claim,
the jury answered no. Id.
trial, the dispositive issue regarding invalidity was whether
an alternating power signal like the signal disclosed in
Wilkinson was a digital-data signal. Like the '476
Patent, Wilkinson disclosed a two-wire device. Tr. Exh. 106
at 4 (“[O]nly two wires are needed to power and control
the system.”). Wilkinson used an alternating power
signal in which the power-supply unit provided a half-wave
voltage signal during the DON'T WALK mode and a full-wave
voltage signal during the WALK mode. Id. Testimony
established that two other pedestrian crosswalk devices, the
Campbell Enlightened and Tassimco devices, operated
similarly. 6 Tr. 36-41. Campbell's expert Dr. Christopher
Jones testified that the full-wave/half-wave signal
identified in Wilkinson and these other devices was a
digital-data signal. Id.
introduced evidence showing that Wilkinson, Campbell
Enlightened, and Tassimco did not send digital data.
Beckwith, the inventor of the '476 Patent, testified that
these devices did not transmit digital data over power like
the Polara Navigator two-wire device. 3 Tr. 93-96. McGaffey
testified that these devices could turn a light on or off
only by manipulating voltage. 3 Tr. 20-21. They could not
accomplish the other functions enabled by the '476
Patent. Id. at 23-25; see 2 Tr. 64-68.
expert Dr. Ian Harris distinguished Wilkinson and, by
extension, the Campbell Enlightened and Tassimco devices. Dr.
Harris testified that the Campbell Enlightened sends only
power and no data. 6 Tr. 81-82 (“The Enlightened
doesn't send digital data signals by any normal
conventional understanding of digital data signals.”).
He noted that the Enlightened device did not have a
microcontroller to interpret a digital-data signal.
Id. at 82-83. He similarly observed that the
Tassimco device and the device described in Wilkinson
transmitted only power. Id. at 87-88 (“Q. So
in all three-the Wilkinson, Enlightened, and Tassimco-all
that's being sent is power? A. Yes.”).
cross-examination, Dr. Harris maintained that
“send[ing] digital signals and power together over two
wires was not obvious at that time.” Id. at
118. He continued to distinguish Wilkinson, noting that
Wilkinson did not disclose encoding a digital signal on top
of the power supply. Id. (“Wilkinson sent
power or not. It didn't send digital data.”). Dr.
Harris also rejected Dr. Jones's contention that
Wilkinson's manipulation of the power signal constituted
data. Id. (“Nobody would call that digital
data. That's power.”).
jury's finding of nonobviousness indicates that it
credited Polara's contention that the differences between
the prior art asserted by Campbell and the '476 Patent
were significant, and that the prior art did not disclose
various elements of Claims 1 through 4. In light of the
jury's validity finding, the Court must infer that the
jury found Dr. Harris to be credible and persuasive when
testifying that Wilkinson's power signal was not digital
data. “[W]hether the prior art discloses the
limitations of a particular claim is a question of fact to be
determined by the jury.” Kinetic, 688 F.3d at
1363. Polara presented ample evidence that Wilkinson and the
other prior art did not disclose the digital-data-over-power
limitation of Claims 1 through 4. The Court must defer to the
jury's factual finding. Id. at 1356-57.
argues that a person of ordinary skill in the art would have
combined Wilkinson's use of two wires with the use of
digital data over power and thus that Claims 1 through 4 are
an obvious combination of familiar elements. But Campbell
offered no evidence at trial to support this argument. Nor
did it define “a person of ordinary skill in the
art.” It did not ask its expert, Dr. Jones, whether
such a person would have been motivated to combine Wilkinson
with digital data over power to achieve the advancement
offered by the Navigator two-wire device.
“[P]ossibility and ease do not automatically translate
to motivation.” Golden Bridge Tech., Inc. v. Apple,
Inc., No. 12-04882, 2015 WL 2064525, at *9 (N.D. Cal.
May 1, 2015). And it offered no evidence to rebut or
contradict Dr. Harris's testimony that “[t]o encode
the digital signal on top of the power was a complicated
thing.” 6 Tr. 118.
Court understands that the idea of transmitting digital data
over a power line was not new at the time of the '476
Patent. But “a patent composed of several elements is
not proved obvious merely by demonstrating that each of its
elements was, independently, known in the prior art.”
KSR, 550 U.S. at 418. “[I]nventions in most,
if not all, instances rely upon building blocks long since
uncovered, and claimed discoveries almost of necessity will
be combinations of what, in some sense, is already
known.” Id. at 418-19. Put differently,
“[a]n invention may be a combination of old elements
disclosed in multiple prior art references.”
Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343,
1354 (Fed. Cir. 2015) (citing Cross Med. Prods, Inc. v.
Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1321 (Fed.
Cir. 2005)). Because the prior-art references did not
disclose using digital data over power to transmit digital
data from the control unit to the various message generating
means, the '476 Patent did more than just combine known
the jury was instructed to consider secondary considerations
indicating nonobviousness, including whether the products
covered by the invention were commercially successful due to
the claimed invention's merits, whether a long-felt but
unsolved need was resolved by the claimed invention, and
whether others copied the claimed invention. 7 Tr. 74-75.
evidence supports the jury's finding in Polara's
favor on these issues. Polara introduced evidence that its
two-wire Navigator device resolved a long-felt but unsolved
need for a two-wire device with the features of its
eight-wire Navigator system such as a locate tone, audible
messages, and a vibrating button. 2 Tr. 22-27. Many of
Polara's potential customers resisted installing an
eight-wire device because their existing intersections had
only two wires, meaning that wiring had to be added at
considerable expense. Id. at 26-29. Polara worked
for almost three years to develop a device that would use the
two existing wires and not require additional wiring.
Id. at 28, 32.
also introduced evidence showing that its two-wire Navigator
device enjoyed substantial commercial success because the
claimed invention, i.e., the use of digital data over power,
enabled them to offer the functionality of an eight-wire
system with only two wires. Polara's customers were
“very happy to see” the two-wire device and
“preferred it over the eight-wire.” Id.
at 52. Finally, Polara introduced evidence suggesting that
Campbell introduced its infringing two-wire accessible
pedestrian system to compete with Polara's Navigator
two-wire device. Id. at 70-71; 3 Tr. 28-29, 118,
motion is not a vehicle for the Court to second-guess the
jury's assessment of the evidence. The jury's finding
of nonobviousness was supported by substantial evidence and
the jury did not misapply the relevant law to the facts.
Therefore, Campbell has not carried its burden of overcoming
the presumption of validity, and its motion for judgment as a
matter of law on obviousness must be denied.
jury found that Campbell failed to prove that the '476
Patent is invalid because it was described in three
publications more than one year before the patent application
was filed. Campbell asks the Court to overturn the jury's
verdict. Dkt. 450 at 54-57. The Court declines to do so
because the evidence showed that the three publications did
not disclose each and every element of the '476 Patent.
trial, Campbell introduced a March 2003 survey conducted by
the United States Access Board. 5 Tr. 150-51; Tr. Exh. 331.
The survey included Polara's original eight-wire
Navigator and stated that the
[m]anufacturer is developing a model that operates with only
two wires to the pushbutton and is programmable after
installation by a traffic engineer using a handheld PDA type
device. The new model will have the capability to alternate
signal sounds, to countdown pedestrian clearance interval and
present a signal at the far end of the crosswalk only. It is
expected to be available by fall 2003.
Tr. Exh. 331 at CAMP024409-10; see 5 Tr. 150-52. An
April 2003 report includes an identical entry. 2 Tr. 196-98;
Tr. Exh. 311 at 1, 29-31. McGaffey testified that he had
provided this entry's information and had been talking to
authors of various industry publications about Polara's
development of a two-wire APS system. See 2 Tr.
also introduced a May 2003 report containing an entry on the
eight-wire Navigator. Id. at 200-03; Tr. Exh. 312 at
1, 233-34. The “comments” section stated:
Manufacturer is developing a model that operates with only
two wires from the intersection traffic control cabinet to
the pushbutton and is programmable after installation by an
engineer using a handheld PDA type device. The new model will
have the capability to synchronize sounds, alternate sounds,
mute all sounds except the activated crosswalks, to verbally
countdown pedestrian clearance interval or present a signal
at the far end of the crosswalk only.
Tr. Exh. 312 at 234.
patent is invalidated as anticipated if “the invention
was patented or described in a printed publication”
more than one year before the patent application was filed.
35 U.S.C. § 102(b). To be anticipatory, the prior art
reference must “explicitly or inherently”
disclose each and every element of the claimed invention.
In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009).
An anticipatory prior art reference must also enable
“one of skill in the art to practice an embodiment of
the claimed invention without undue experimentation.”
Am. Calcar, Inc. v. Am. Honda Motor Co., 651 F.3d
1318, 1341 (Fed. Cir. 2011); see also In re Donohue,
766 F.2d 531, 533 (Fed. Cir. 1985) (“Such possession is
effected if one of ordinary skill in the art could have
combined the publication's description of the invention