United States District Court, D. Oregon
Mansfield, Harris Bricken, LLP, John J. Edmonds, Stephen F.
Schlather, Shea N. Palavan, Brandon G. Moore, and Eric R.
Carr, Collins Edmonds & Schlather, PLLC, Of Attorneys for
S. Gill, Stoll Stoll Berne Lokting & Shlachter, pc, Jenny
W. Chen, Chen IP Law Group, 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”), brought
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”). A jury trial
was held, beginning April 24, 2018 and ending May 8, 2018.
The jury found that Planar was liable for direct
infringement, active inducement, and as a contributory
infringer, and that neither the 978 Patent nor the 331 Patent
were invalid. The jury awarded Mass. money damages in the
total amount of $1, 150, 000. The jury, however, was unable
to reach a unanimous verdict on the question of whether
Planar's infringement was willful. The Court declared a
mistrial only on that question, and otherwise accepted the
jury's verdict. The Court then scheduled a new jury trial
solely on the question of willfulness. The Court held a
two-day jury trial beginning July 9, 2018. The jury found for
Planar, finding that Mass. had not proven that Planar's
infringement was willful. The Court also held a two-day bench
trial on Planar's claim that Mass. had engaged in
inequitable conduct. The Court found in favor of Mass.
the Court are three post-judgment motions: (1)
Plaintiff's Motion for an Exceptional Case Finding and
Attorney's Fees under 35 U.S.C. § 285 (ECF 441), in
which Mass. seeks attorney's fees in the amount of $185,
000 for Planar's allegedly improper litigation conduct;
(2) Defendant's Renewed Motion for Judgment as a Matter
of Law, or, in the Alternative, for a New Trial (ECF 443);
and (3) Defendant's Motion to Amend the Judgment and for
New Trial Pursuant to Rule 59 (ECF 444). For the reasons that
follow, all three post-trial motions are DENIED.
Exceptional Case Status and Attorney's Fees Under 35
U.S.C. § 285
35 U.S.C. § 285, “[t]he court in exceptional cases
may award reasonable attorney fees to the prevailing
party.” “[A]n ‘exceptional' case is
simply one that stands out from others with respect to the
substantive strength of a party's litigating position
(considering both the governing law and the facts of the
case) or the unreasonable manner in which the case was
litigated.” Octane Fitness, LLC v. ICON Health
& Fitness, Inc., 572 U.S. 545, 554 (2014)
(alteration added). A court “should determine whether a
case is exceptional on a case-by-case basis, considering the
totality of the circumstances.” ATEN Int'l Co.
v. Uniclass Tech. Co., 932 F.3d 1371, 1373 (Fed. Cir.
2019). Such circumstances may include “frivolousness,
motivation, objective unreasonableness (both in the factual
and legal components of the case) and the need in particular
circumstances to advance considerations of compensation and
deterrence.” Octane Fitness, 572 U.S. at 554
n.6 (quotation marks omitted).
Judgment as a Matter of Law
grant or denial of a motion for judgment as a matter of law
is a procedural issue not unique to patent law, reviewed
under the law of the regional circuit in which the appeal
from the district court would usually lie.” Acco
Brands, Inc. v. ABA Locks Mfr. Co., 501 F.3d 1307, 1311
(Fed. Cir. 2007). Thus, the Court follows Ninth Circuit law
in evaluating Planar's motion for judgment as a matter of
as a matter of law is proper if “the evidence permits
only one reasonable conclusion, and that conclusion is
contrary to the jury's verdict.” E.E.O.C. v. Go
Daddy Software, Inc., 581 F.3d 951, 961 (9th Cir. 2009)
(quotation marks omitted); see also Weaving v. City of
Hillsboro, 763 F.3d 1106, 1111 (9th Cir. 2014)
(explaining that judgment as a matter of law must be granted
if it is clear that “the evidence and its inferences
cannot reasonably support a judgment in favor of the opposing
party”). Because a motion under Rule 50(b) is a renewed
motion, a party cannot “raise arguments in its
post-trial motion for judgment as a matter of law that it did
not first raise in its Rule 50(a) pre-verdict motion.”
Go Daddy Software, 581 F.3d at 961 (quotation marks
evaluating a motion for judgment as a matter of law, the
Court must view all the evidence in the light most favorable
to the non-moving party and draw all reasonable inferences in
that party's favor. Experience Hendrix, L.L.C., v.
Hendrixlicensing.com, Ltd., 762 F.3d 829, 842 (9th Cir.
2014). The Court may not, however, make credibility
determinations, weigh the evidence, or “substitute its
view of the evidence for that of the jury.”
Krechman v. City of Riverside, 723 F.3d
1104, 1110 (9th Cir. 2013) (quotation marks omitted). A
jury's verdict must be upheld if it is supported by
substantial evidence. Escriba v. Foster Poultry Farms,
Inc., 743 F.3d 1236, 1242 (9th Cir. 2014); Johnson
v. Paradise Valley Unified Sch. Dist., 251 F.3d 1222,
1227 (9th Cir. 2001). 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.” Weaving, 763 F.3d at 1111
(quotation marks omitted).
Rule 50 motions, Rule 59 motions in patent cases are governed
by the law of the regional circuit. Chamberlain Grp.,
Inc. v. Techtronic Indus. Co., 935 F.3d 1341, 1350 (Fed.
Cir. 2019). The Court “may grant a new trial only if
the verdict is contrary to the clear weight of the evidence,
is based upon false or perjurious evidence, or to prevent a
miscarriage of justice.” Molski v. M.J. Cable,
Inc., 481 F.3d 724, 729 (9th Cir. 2007) (quotation marks
omitted); see also Shimko v. Guenther, 505 F.3d 987,
993 (9th Cir. 2007). Unlike a Rule 50 determination, the
Court is not required to view the evidence in the light most
favorable to the non-moving party. Experience
Hendrix, 762 F.3d at 842. Rather, the Court “can
weigh the evidence and assess the credibility of the
witnesses.” Id. (citing Kode v.
Carlson, 596 F.3d 608, 612 (9th Cir. 2010) (per
curiam)). A judge should not award a new trial unless she is
“left with the definite and firm conviction that a
mistake has been committed.” France Telecom S.A. v.
Marvell Semiconductor Inc., 2015 WL 925892, at *1 (N.D.
Cal. Mar. 2, 2015) (quoting Landes Constr. Co. v. Royal
Bank of Canada, 833 F.2d 1365, 1371-72 (9th Cir. 1987)).
Plaintiff's Motion for Reasonable Expenses, Including
argues that the Court should find that certain aspects of
this case were litigated unreasonably, and thus Mass. is
entitled to a portion of its attorney's fees. Mass.
argues that particular arguments in certain motions were
unreasonably litigated and resulted in Mass. having to incur
unreasonable attorney's fees. Mass. also argues that
Planar asserted before trial the defense of reliance on the
opinion of counsel and a significant amount of prior art,
causing Mass. to expend resources preparing to defend those
issues, but then dropped the reliance of counsel defense
shortly before trial and at trial only submitted a very
limited number of prior art references to the jury. Mass.
contends that this litigation conduct was unreasonable and
makes this case exceptional. Mass. also notes that in a few
of the Court's opinions and orders, the Court noted that
some of Planar's arguments were “without
fact that the Court rejected some of Planar's legal
arguments during this complex, hard-fought patent litigation
does not mean that Planar unreasonably litigated this case to
the point that it rises to the level of an exceptional case
warranting an award of attorney's fees. See,
e.g., ATEN, 932 F.3d at 1374 (“Though
ATEN's lost profits theory was not strong enough to
withstand summary judgment, ‘[a] party's position .
. . ultimately need not be correct for them to not
‘stand[ ] out.'” (alterations in original)
(quoting SFA Sys., LLC v. Newegg Inc., 793 F.3d
1344, 1348 (Fed. Cir. 2015))). The Court has considered
Plaintiff's litigation conduct with respect to the
strengths of its arguments and positions and does not find
that they were “so objectively unreasonable or
exceptionally meritless as to stand out from other
Planar's “shifting” positions on whether to
use the defense of an opinion of counsel, the Court does not
find this conduct to be objectively unreasonable.
Planar's original counsel did not assert this defense.
Planar's replacement counsel requested the ability to add
this as a defense, based on the advice of counsel that
HighGrade received. Planar argued that its original counsel
had not provided adequate services and had perhaps engaged in
malpractice. The Court allowed Planar to add this defense.
After further discovery, learning more about Mass's
infringement case, and learning more about the specifics of
the advice of counsel, Planar's new counsel ultimately
decided not to rely on this defense at trial and to exercise
its statutory right not to have the advice of counsel
disclosed at trial. This was not an unreasonable trial
strategy, nor was it unreasonable for Planar's counsel to
change tactics after learning more information.
Planar's use of fewer prior art references at trial than
before trial, the Court does not find this to stand out.
Parties often assert arguments, propose exhibits, propose
testimony, and propose witnesses before trial that do not end
up being presented at trial. Planar contends that it did not
submit to the jury all of the prior art references because it
ran out of trial time. The parties had agreed to a set amount
of hours per side and the Court monitored the trial time
“chess clock” style. This is a reasonable
explanation for why Planar presented fewer prior art
references. Even if Planar had not ran out of trial time,
however, it is not objectively unreasonable for litigants to
shift strategies during trial and reduce the number of
witnesses or the evidence presented. Additionally, the fact
that Planar expended resources on expert testimony relating
to the prior art references supports that Planar litigated
those prior art references in good faith and not solely for
the purpose of driving up Mass's expenses.
the totality of the circumstances, the Court finds that Mass.
has not met its burden of proving that this was an
exceptional case as that term is used in § 285. This
case does not stand out from others with respect either to
the strength of Planar's litigating position or the
unreasonable manner in which Planar litigated this case.
Accordingly, Mass's motion for attorney's fees is
Defendant's Motion for Judgment as a Matter of
renews its motion for judgment as a matter of law on three
grounds: (1) there was not substantial evidence presented at
trial supporting the jury's findings regarding
Plaintiff's contributory infringement claim; (2) there
was not substantial evidence presented at trial supporting
the jury's findings regarding Plaintiff's induced
infringement claim; and (3) there was not sufficient evidence
presented at trial to support the jury's damages award.
Mass. objects to this motion on the merits, but also argues
that the motion, and Planar's motion for a new trial
under Rule 59, are untimely. Planar also moves for a
remittur. The Court addresses each argument in
argues that under Rule 6(b)(2) of the Federal Rules of Civil
Procedure, the Court did not have any discretion to extend
the deadline as established in Rules 50(b) and 59(b) for
Planar to file its post-judgment motions. Mass. further
argues that the “placeholder” motions filed by
Planar are insufficient under Local Rule 7-1(c).
6(b)(2) provides: “A court must not extend the time to
act under Rules 50(b) and (d), 52(b), 59(b), (d), and (e),
and 60(b).” Local Rule 7-1(c) provides: “Every
motion must be supported by a legal memorandum. The legal
memorandum must be combined in a single document with the
motion. A legal memorandum exceeding 20 pages must have a
table of contents and a table of cases and authorities with
requires that renewed motions for judgment as a matter of law
be filed 28 days after the judgment is entered. Fed.R.Civ.P.
50(b). Rule 59 has the same time requirement for motions for
a new trial. Fed.R.Civ.P. 59(b). The Court entered judgment
on December 4, 2018, making the motions due January 2, 2019
(January 1, 2019, 28 days from December 4, 2018, was a court
holiday). The parties, however, each proposed a post-judgment
briefing schedule that included initial motions to be filed
by Planar (and Mass, for attorney's fees) after the
28-day period. Mass. proposed that post-judgment motions be
filed by January 11, 2019, and Planar proposed that such
motions be filed by January 29, 2019. These proposed
deadlines took into consideration the holidays and
pre-planned attorney vacations. The Court set the deadline
for January 29, 2019.
light of the requirement that motions under Rule 50(b) and
59(a) must be filed within 28 days from the entry of
judgment, Planar filed a motion on January 2, 2019. ECF 433.
This motion outlined in a few pages Planar's arguments
supporting its Rule 50(b) and 59(a) motions. This motion also
stated that by January 29, 2019, the deadline set by the
Court, Planar would both fully confer with Mass. and file a
more complete memorandum in support of the motions, to comply
with Local Rule 7-1(a) and (c). Planar's motion generally
described the grounds on which it challenged the jury's
verdict and on which Planar it requested a new trial.
Court accepts Planar's initial filing as containing
sufficient particularity and reasonable specificity to comply
with the Federal Rules of Civil Procedure and the Local
Rules. See, e.g. United States v. Bills, 2018 WL
6697180, at *2 (N.D. Ill.Dec. 20, 2018) (“The Court
finds this [Rule 59(e)] Motion sufficiently identifies the
relief sought and sets forth the Government's argument in
support of such relief with reasonable specificity. The
Court, therefore, will consider the Motion and supporting
briefs, despite their piecemeal filing.” (citation
omitted)). Additionally, to the extent Planar's January
2, 2019 motion did not fully comply with Local Rule 7-1(c),
the Court finds that an exception to Local Rule 7-1(c) is
appropriate in this case. Both parties requested deadlines
beyond the 28-day period (albeit different deadlines) and the
Court granted the request and extended the deadline for the
substantive memoranda supporting the post-judgment motions.
It is inequitable for Mass. to request a briefing schedule
outside the 28-day period and then argue under Local Rule
7-1(c) that the motions should be denied because the full
supporting memorandum was filed outside the 28-day period.
argues that the jury's finding of contributory
infringement was not supported by substantial evidence.
Specifically, Planar argues that Mass. failed to show that:
(a) Planar's products did not have a substantial,
noninfringing use with respect to the “integral
arm” requirement of claims 1, 4, and 10 of the 331
Patent; (b) Planar's products tended to “wrap
around” the user as required in claims 1, 4, and 10 of
the 331 Patent; (c) Planar's “old” model of
triple monitor stand was sold after the 331 Patent issued;
and (d) any user had any preference of a “desired
degree” to which Planar's monitor stands would
allow the monitors to be adjusted, as required under the 978
Patent. Each argument is addressed in turn.
patent code provides, in relevant part, that “[w]hoever
. . . sells . . . a component of a patented machine . . .,
constituting a material part of the invention, . . . and not
a staple article or commodity of commerce suitable for
substantial noninfringing use, shall be liable as a
contributory infringer.” 35 U.S.C. § 271(c).
“A substantial noninfringing use is any use that is not
unusual, far-fetched, illusory, impractical, occasional,
aberrant, or experimental.” Nalco Co. v. Chem-Mod,
LLC, 883 F.3d 1337, 1357 (Fed. Cir. 2018) (quotation
marks omitted). Planar asserts that it presented evidence
that its allegedly infringing monitor stands were used with
the arms separated, and thus were not infringing.
presented evidence and argued at trial that Planar's
purported noninfringing use of the monitor stands with arms
separated was illusory, impractical, and, at most,
occasional. Mass. showed a video of its expert, Dr. John
Akin, testing a configuration with arms separated and showing
the instability of that configuration. Dr. Akin also
performed a similar demonstration in court and testified that
using the monitor stands with the arms separated was unsafe,
dangerous, and presented a tipping hazard. Dr. Akin further
testified that the separated-arm configuration that Planar
claimed, in which one monitor was in portrait mode and one
was in landscape mode and the top or the bottom of the
monitors was aligned, was not a configuration he had ever
seen in his 50 years in a computer-aided science environment.
Mass. also submitted Planar's product specifications and
assembly instructions, which provided instructions for
locking the two arms together as one integral unit and showed
images of the arms together. Some later instructions also,
however, provided an optional configuration with arms
separated and some included an image of that configuration.
Mass. argued that those later instructions were produced
after this lawsuit was filed, in an effort to avoid
liability. The jury also had the allegedly infringing monitor
stands along with some monitors in the jury room.
asserts that Dr. Akin's configuration with arms separated
is not the configuration shown in the assembly instructions
or a normal configuration with arms separated, but is instead
an improper assembly with the monitor mount attached to the
arm (in contravention to the instructions), no monitor
attached, and the arms tilted so far back that the stand
could do nothing but fall over. Planar asserts that with a
normal arms-separated configuration and monitors attached,
the monitor stands are stable.
presented the testimony at trial of Ming-Hsien Huang,
president of HighGrade Technology Co, Ltd.
(“HighGrade”). HighGrade is the indemnitor of
Planar and manufacturer of the allegedly infringing products.
Mr. Huang testified that the products are manufactured to be
able to work with the arms separated and he has never
received a complaint that the monitor stands are unstable
with the arms separated. Mr. Huang also testified that he had
seen “a lot of uses with doctors and in the office, and
[the monitor stands are] used the way [they were]
designed.” He explained that these uses included with
the arms separated and the monitors split, with one in
portrait orientation and one in landscape orientation. Planar
also presented the expert testimony of Dr. Raymond Yee, who
had purportedly followed Planar's assembly instructions
and tested arms-separated configurations that had monitors
attached. Dr. Yee testified that the configurations he tried
were stable and safe. Planar also notes that Mass's owner
Jerry Moscovitch testified that he would not expect someone
to put Planar's products together in the manner shown by
Dr. Akin, because people would not “set it up so it
would fall over” and may instead put them
“together in the correct manner.”
the evidence in the light most favorable to Mass. and drawing
all inferences in Mass's favor, the Court does not find
that that the “evidence permits only one reasonable
conclusion, and that conclusion is contrary to the jury's
verdict.” Go Daddy, 581 F.3d at 961. The jury
was presented with conflicting evidence and experts with
contradicting opinions. The jury also had the physical items
in the jury room to test. The jury was given an instruction
on contributory infringement that included the requirement
that there be no substantial, noninfringing use. Substantial,
noninfringing use was defined to the jury as use that is not
“occasional, farfetched, impractical, experimental, or
hypothetical.” There was substantial evidence
supporting the jury's implicit finding that Planar's
purported noninfringing use was occasional, farfetched,
impractical, experimental, or hypothetical.
Wrap around the user
argues that its products cannot infringe the 331 Patent
because the products only hold monitors of less than 24 or 32
inches, the monitors necessarily will sit in front of a user
regardless of how the support arms are bowed, and thus they
do not “wrap around” the user. Planar appears to
interpret the claims of the 331 Patent to require the
monitors to literally surround, or at least be beside the
user or otherwise break the plane in front of the user.
Planar's interpretation of “tends to wrap around
the user” is too limiting and contrary to the 331
Patent. The 331 Patent discusses “wrapping
around” the user in the specification and in claims 1
and 9. The patent provides:
The slightly bowed configuration of the horizontal support
arm further helps to place the LCD screens 14, 16 and 18 in a
manner such that the screens “wrap around” the
user and further enhance the ease with which each screen may
be viewed. The radius of curvature is preferably within a
range of about 24”-36”, and more preferably about
30”, which has been found to ergonomically maximize the
convenience to the user in viewing the LCD screens
* * *
the support arm is a) bowed at the front of the support arm
so that in use the support arm tends to wrap around a user
positioned in ...