United States District Court, D. Oregon
Mansfield, Harris Bricken, Stephen F. Schlather, John J.
Edmonds, Shea N. Palavan, and Brandon G. Moore, Collins,
Edmonds, Schlather & Tower, PLLC, Of Attorneys for
S. Gill, Stoll Stoll Berne Lokting & Shlachter, P.C.,
Jenny W. Chen, Chen IP Law Group, Rueiguang Road, Taiwan
(R.O.C.); Andrew T. Oliver, Amin, Turocy & Watson, LLP,
Of Attorneys for Defendant.
OPINION AND ORDER
Michael H. Simon United States District Judge
Mass. Engineered Design, Inc. (“Mass”) brings
this lawsuit against Defendant Planar Systems, Inc.
(“Planar”), alleging infringement of U.S. Patent
No. RE36, 978 (the “'978 Patent”) and U.S.
Patent No. 8, 102, 331 (the “'331 Patent”).
Before the Court are five motions for summary judgment filed
by Planar, asserting that: (1) there is no genuine issue of
material fact that Planar acted willfully to support enhanced
damages under the Patent Act; (2) Planar has not infringed
the '331 Patent; (3) the '331 Patent is invalid; (4)
Planar has not infringed the '978 Patent; and (5) the
'978 Patent is invalid. Planar also moves to exclude the
report and testimony of Mass's expert Peter Heuser, J.D.,
and portions of the report and testimony of Mass's expert
J.E. Akin, Ph.D., P.E. The final motion before the Court is
Mass's motion to exclude portions of the report and
testimony of Planar's expert Raymond Yee, Ph.D.,
For the following reasons, Planar's motions for summary
judgment are denied, Planar's motion to exclude portions
of the expert testimony of Dr. Akin is denied, Planar's
motion to exclude the testimony of Mr. Heuser is granted in
part and deferred in part, and Mass's motion to exclude
portions of the testimony of Dr. Yee is denied.
A. Summary Judgment
is entitled to summary judgment if the “movant shows
that there is no genuine dispute as to any material fact and
the movant is entitled to judgment as a matter of law.”
Fed.R.Civ.P. 56(a). The moving party has the burden of
establishing the absence of a genuine dispute of material
fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323
(1986). The court must view the evidence in the light most
favorable to the non-movant and draw all reasonable
inferences in the non-movant's favor. Clicks
Billiards Inc. v. Sixshooters Inc., 251 F.3d 1252, 1257
(9th Cir. 2001). Although “[c]redibility
determinations, the weighing of the evidence, and the drawing
of legitimate inferences from the facts are jury functions,
not those of a judge . . . ruling on a motion for summary
judgment, ” the “mere existence of a scintilla of
evidence in support of the plaintiff's position [is]
insufficient . . . .” Anderson v. Liberty Lobby,
Inc., 477 U.S. 242, 252, 255 (1986). “Where the
record taken as a whole could not lead a rational trier of
fact to find for the non-moving party, there is no genuine
issue for trial.” Matsushita Elec. Indus. Co. v.
Zenith Radio Corp., 475 U.S. 574, 587 (1986) (quotation
United States Court of Appeals for the Ninth Circuit has
discussed the standard under which a district court should
consider the admissibility of expert testimony. See City
of Pomona v. SQM N. Am. Corp., 750 F.3d 1036
(9th Cir. 2014). As explained by the Ninth Circuit:
Rule 702 of the Federal Rules of Evidence provides that
expert opinion evidence is admissible if: (1) the witness is
sufficiently qualified as an expert by knowledge, skill,
experience, training, or education; (2) the scientific,
technical, or other specialized knowledge will help the trier
of fact to understand the evidence or to determine a fact in
issue; (3) the testimony is based on sufficient facts or
data; (4) the testimony is the product of reliable principles
and methods; and (5) the expert has reliably applied the
relevant principles and methods to the facts of the case.
Under Daubert [v. Merrell Dow Pharm., Inc.,
509 U.S. 579 (1993)] and its progeny, including Daubert
II [Daubert v. Merrell Dow Pharms, Inc., 43
F.3d 1311 (9th Cir. 1995)], a district court's inquiry
into admissibility is a flexible one. Alaska Rent-A-Car,
Inc. v. Avis Budget Grp., Inc., 738 F.3d 960, 969 (9th
Cir. 2013). In evaluating proffered expert testimony, the
trial court is “a gatekeeper, not a fact finder.”
Primiano v. Cook, 598 F.3d 558, 565 (9th Cir. 2010)
(citation and quotation marks omitted).
“[T]he trial court must assure that the expert
testimony ‘both rests on a reliable foundation and is
relevant to the task at hand.'” Id. at 564
(quoting Daubert, 509 U.S. at 597). “Expert
opinion testimony is relevant if the knowledge underlying it
has a valid connection to the pertinent inquiry. And it is
reliable if the knowledge underlying it has a reliable basis
in the knowledge and experience of the relevant
discipline.” Id. at 565 (citation and internal
quotation marks omitted). “Shaky but admissible
evidence is to be attacked by cross examination, contrary
evidence, and attention to the burden of proof, not
exclusion.” Id. at 564 (citation omitted). The
judge is “supposed to screen the jury from unreliable
nonsense opinions, but not exclude opinions merely because
they are impeachable.” Alaska Rent-A-Car, 738
F.3d at 969. Simply put, “[t]he district court is not
tasked with deciding whether the expert is right or wrong,
just whether his testimony has substance such that it would
be helpful to a jury.” Id. at 969-70.
The test of reliability is flexible. Estate of Barabin v.
AstenJohnson, Inc., 740 F.3d 457, 463 (9th Cir. 2014)
(en banc). The court must assess the expert's reasoning
or methodology, using as appropriate criteria such as
testability, publication in peer-reviewed literature, known
or potential error rate, and general acceptance. Id.; see
also Primiano, 598 F.3d at 564. But these factors are
“meant to be helpful, not definitive, and the trial
court has discretion to decide how to test an expert's
reliability as well as whether the testimony is reliable,
based on the particular circumstances of the particular
case.” Primiano, 598 F.3d at 564 (citations
and quotation marks omitted); see also Barabin, 740
F.3d at 463. The test “is not the correctness of the
expert's conclusions but the soundness of his
methodology, ” and when an expert meets the threshold
established by Rule 702, the expert may testify and the fact
finder decides how much weight to give that testimony.
Primiano, 598 F.3d at 564-65. Challenges that go to
the weight of the evidence are within the province of a fact
finder, not a trial court judge. A district court should not
make credibility determinations that are reserved for the
Id. at 1043-44 (case citation alterations added,
remaining alterations in original).
is the proponent of the expert who has the burden of proving
admissibility.” Lust v. Merrell Dow Pharm.,
Inc., 89 F.3d 594, 598 (9th Cir. 1996). Admissibility of
the expert's proposed testimony must be established by a
preponderance of the evidence. See Daubert, 509 U.S.
at 592 n.10 (citing Bourjaily v. United States, 483
U.S. 171, 175-76 (1987)). The party presenting the expert
must demonstrate that the expert's findings are based on
sound principles and that they are capable of independent
validation. Daubert II, 43 F.3d at 1316.
section, the Court sets forth the background relating to the
issuance of the patents-in-suit and this lawsuit. Further
factual background is set forth in the Discussion section
below, when relevant to a specific motion.
alleges infringement claims 16, 18, 25, and 27 of the
'978 Patent. The '978 Patent is titled “Dual
Display System” and describes a specific type of stand
for two electronic “displays” (or
“monitors”). It was filed on October 13, 1998,
and issued on December 5, 2000. The ‘978 Patent is a
reissue of U.S. Patent No. 5, 687, 939, which was filed on
April 26, 1996, and issued on November 18, 1997. The '978
Patent was reexamined, and on May 10, 2011, an Ex Parte
Reexamination Certificate issued, adding new claims 18-38.
New claims 18-37 are dependent on either claim 16 or 17.
also alleges infringement of claims 1, 4, 10, and 18 of the
'331 Patent. The '331 Patent is titled
“Horizontal Three Screen LCD Display System” and
describes a specific type of stand for at least two
“displays” (or “monitors”). The
'331 Patent was originally filed as non-provisional
application No. 10/129, 884, based on application No.
PCT/IB00/01646, filed on November 13, 2000, which published
on May 10, 2002 as PCT publication No. WO01/35197. It further
claims priority to provisional application No. 60/165, 047,
filed on November 12, 1999. The '331 Patent was issued on
January 24, 2012, after extensive prosecution.
November 12, 2009, Mass. sued Planar and others in the
Eastern District of Texas, alleging infringement of the
'978 patent (the “First Lawsuit”). Mass.
served its complaint on Planar on February 26, 2010. On
August 2, 2012, after health issues arose relating to
Mass's lead counsel, Mass. and Planar, among others,
stipulated to the dismissal of the First Lawsuit without
2, 2014, Mass. sued Planar and others in several lawsuits
filed in the Eastern District of Texas, alleging infringement
of both the '978 and the '331 patents. On November
10, 2014, the district court consolidated the actions for
pretrial issues only, including claim construction. On March
24, 2015, the Eastern District of Texas granted in part
Planar's motion to transfer venue to the District of
Oregon, “effective the day the Court issues its claim
construction opinion.” ECF 24 at 1. The Eastern
District of Texas issued its claim construction
(Markman) decision on July 20, 2016. ECF 31. On July
26, 2016, the District of Oregon received the transfer of
Mass's action against Planar. ECF 34; see also
ECF 53 at 2.
284 of the Patent Act provides that, in a case of
infringement, courts ‘may increase the damages up to
three times the amount found or assessed.'”
Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S.Ct.
1923, 1928 (2016) (quoting 35 U.S.C. § 284).
“[T]here is no precise rule or formula for awarding
damages under § 284.” Id. at 1932
(quotation marks omitted). “The sort of conduct
warranting enhanced damages has been variously described in
our cases as willful, wanton, malicious, bad-faith,
deliberate, consciously wrongful, flagrant, or-indeed-
characteristic of a pirate.” Id. Such damages
“are not to be meted out in a typical infringement
case, but are instead designed as a ‘punitive' or
‘vindictive' sanction for egregious infringement
behavior” and “are generally reserved for
egregious cases of culpable behavior.” Id.
infringement is “willful” is by definition a
question of the infringer's intent, the answer to which
must be inferred from all the circumstances. Ortho Pharm.
Corp. v. Smith, 959 F.2d 936, 944 (Fed. Cir. 1992);
Gustafson, Inc. v. Intersystems Indus. Prods., Inc.,
897 F.2d 508, 510-11 (Fed. Cir. 1990); see also Friedman
v. Live Nation Merch., Inc., 833 F.3d 1180, 1186 (9th
Cir. 2016) (“A determination of willfulness requires an
assessment of a defendant's state of mind.”).
“Courts consider several factors when determining
whether an infringer has acted in bad faith and whether
damages should be increased.” Liquid Dynamics Corp.
v. Vaughan Co., Inc., 449 F.3d 1209, 1225 (Fed.
Cir. 2006). They include:
(1) whether the infringer deliberately copied the ideas or
design of another; (2) whether the infringer, when he knew of
the other's patent protection, investigated the scope of
the patent and formed a good-faith belief that it was invalid
or that it was not infringed; and (3) the infringer's
behavior as a party to the litigation.
Read Corp. v. Portec Inc., 970 F.2d 816, 827 (Fed.
Cir. 1992), superseded on other grounds as recognized in
Hoechst Celanese Corp. v. BP Chems. Ltd., 78 F.3d 1575,
1578 (Fed. Cir. 1996).
argues that there is no evidence that it acted in bad faith
or engaged in willful, wanton, malicious, deliberate,
consciously wrongful, or flagrant conduct. HighGrade is the
manufacturer of the allegedly infringing products sold by
Planar. At some point, Planar entered into an indemnification
agreement with HighGrade, in which HighGrade agreed to
indemnify Planar for any claims of patent infringement.
Although no party provided a written copy of the
indemnification agreement to the Court, at oral argument,
counsel for Planar represented that the indemnification
agreement was entered into in April 2008, before Mass. filed
the First Lawsuit for patent infringement against Planar.
Planar's Rule 30(b)(6) deposition of Mr. Stephen M.
Going, Planar's former General Counsel, Mr. Going
testified that the separate indemnification agreement by
HighGrade in favor of Planar was “unique” and
that generally with its suppliers Planar relied on its
purchase order standard terms and conditions, which included
an indemnification clause. ECF 129-2 at 16. Mr. Going did not
know the specific circumstances under which the separate
indemnification agreement with HighGrade was executed.
Id. at 17.
Mass. filed the suit and Planar became aware of the alleged
infringement, Planar expressly stated that it was continuing
to sell the allegedly infringing products in large part
because it had an indemnification agreement with HighGrade.
See ECF 129-3 at 19-20, 25, 26-27. Viewing the
evidence in the light most favorable to Mass. and drawing all
reasonable inferences in favor of Mass, the Court finds the
existence of the “unique” indemnification
agreement with HighGrade and Planar's express reliance on
that agreement to continue selling the allegedly infringing
products after Planar was put on notice of the alleged
infringement through the filing of the original lawsuit (for
the '978 Patent) and this lawsuit (for the '331
Patent) is sufficient to create a genuine issue of fact on
the question of willfulness. Cf. SynQor, Inc. v. Artesyn
Techs., Inc., 2013 WL 12084744, at *12 (E.D. Tex. July
19, 2013), report and recommendation adopted, 2013
WL 12085171 (E.D. Tex. July 29, 2013) (finding, in the
context of willful blindness, that the fact that the
defendants refused to continue sales until they entered into
an indemnification agreement “tips the scale in
creating a genuine issue of material fact as to whether
Defendants' were willfully blind” as to the patent
infringement because the defendants were “protecting
[their] own financial interest by entering into
indemnification agreements shielding [them] from
also argues that because Mass. did not move for a preliminary
injunction and because Planar did not have knowledge of the
patents-in-suit before this lawsuit was filed, Mass. cannot
exclusively rely on post-filing conduct for willfulness,
citing to In re Seagate Tech., LLC, 497 F.3d 1360,
1374 (Fed. Cir. 2007). This argument fails for three reasons.
First, Mass. had knowledge of the '978 Patent before this
lawsuit, from the previously-filed lawsuit against Planar
involving the '978 Patent. Second, Mass. is not
exclusively relying on post-suit conduct, because the
indemnification agreement entered-into between HighGrade and
Mass. occurred before this litigation. Third, the Federal
Circuit has explained that seeking a preliminary injunction
is not required for a patentee to rely on post-filing
conduct. Mentor Graphics Corp. v. EVE-USA, Inc., 851
F.3d 1275, 1295-96 (Fed. Cir. 2017) (finding that the
district court “erred in concluding that Synopsys could
not present evidence of post-filing willful infringement
because Synopsys did not seek a preliminary injunction”
because “there is ‘no rigid rule' that a
patentee must seek a preliminary injunction in order to seek
Noninfringement of the '331 Patent
argues that Mass. fails to provide evidence showing a genuine
issue of fact that Planar directly infringed the '331
Patent because many elements of the asserted claims, or
claims on which the asserted claims depend, are not present.
These elements include aspects of the support arms,
connections to the monitors, and support column placement.
Planar also notes that a number of the accused products are
not sold with any monitors. Planar argues that there is
insufficient evidence showing that Planar has assembled the
accused products with at least two monitors and that the
'331 Patent requires at least two displays for a product
indirect infringement, Planar similarly argues that there is
insufficient evidence that any end user assembled the
products with at least two monitors. For contributory
infringement, Planar also argues that there are substantial
noninfringing uses of the accused products and thus no
The Accused Products that Do Not Include Monitors
the accused products are sold without monitors. Planar argues
that Mass. provides insufficient evidence relating to those
products that Planar or end users assemble them with at least
two displays, as required by the '331 Patent. Mass.
responds that inclusion of monitors is not required by the
asserted claims of the '331 Patent, and that only the
presence of connectors that serve the purpose of connecting
monitors is required. Mass. further responds that if
inclusion of monitors is required, assembly by Planar is not
required because a manufacturer cannot avoid liability by
selling infringing products unassembled. Mass. also asserts
that there is sufficient evidence that the accused products
are capable of infringing, are assembled in an infringing
manner by Planar and end users, and are necessarily
Court agrees that Claims 1 and 9 do not require that monitors
be attached. See Section B.3 below. Moreover, even
if the presence of monitors is required, the Court agrees
with Mass. that there is sufficient evidence to create an
issue of fact for the jury on infringement by Planar and end
patent laws do not allow a manufacturer to avoid infringement
simply by selling a dissembled device that would infringe on
assembly.” EBS Automotive Servs. v. Ill. Tool
Works, Inc., 2011 WL 4021323, at *5 (S.D. Cal. Sept. 12,
2011); see also High Tech Med. Instrumentation, Inc. v.
New Image Indus., Inc., 49 F.3d 1551, 1556 (Fed. Cir.
1995). Planar argues that the devices do not infringe because
they might not be assembled attached to two monitors. Planar
relies on ACCO Brands, Inc. v. ABA Locks Manufacturer
Co. to argue that Mass. must prove either (1) specific
instances of infringement, or (2) that Planar's accused
products sold without monitors “necessarily
infringe.” 501 F.3d 1307, 1313 (Fed. Cir. 2007).
Court finds the facts of the pending case are more similar to
Toshiba Corp. v. Imation Corp., 681 F.3d 1358 (Fed.
Cir. 2012), and Lucent Techs, Inc. v. Gateway, Inc.,
580 F.3d 1301 (Fed. Cir. 2009), than to ACCO, and is
persuaded by how the Federal Circuit distinguished
ACCO in those cases. In Toshiba, the
Federal Circuit found sufficient evidence to preclude summary
judgment because the manufacturer “designed the DVDs to
be used in an infringing way and instructed users to use them
in the infringing way by finalizing the DVDs or using the
disc-at-once mode.” Toshiba, 681 F.3d at 1365.
The court noted that it was “not the first time we have
concluded that where an alleged infringer designs a product
for use in an infringing way and instructs users to use the
product in an infringing way, there is sufficient evidence
for a jury to find direct infringement.” Id.
(citing, by way of example, Lucent). The court
distinguished ACCO on the ground that the products
in that case were sold only with instructions describing
noninfringing use and the only other evidence relied upon by
the patentee “was its expert testimony that the
infringing mode was the ‘natural and intuitive way'
to operate the device, ” although the “expert
‘had no opinion' on whether others used the device
in an infringing mode.” Id. at 1366 (quoting
ACCO, 501 F.3d at 1313).
in Lucent, the Federal Circuit found circumstantial
evidence sufficient to uphold the jury's verdict where
the products were designed to practice the claimed invention
and sold with instructions on how to use the products in an
infringing way. Lucent, 580 F.3d at 1318. Further,
the patentee's expert opined that he and his wife used
the product in an infringing way and that he found it
“hard to imagine that we're the only two people in
the world that ever used it” in that manner.
Id. The court also distinguished ACCO
because in Lucent the products were sold ...