Braintree Laboratories, Inc. v. Nephro-Tech, Inc.

• Decision Date: 07 January 2000
• Docket Number: No. 96-2459-JWL.,96-2459-JWL.
• Citation: 81 F.Supp.2d 1122
• Parties: BRAINTREE LABORATORIES, INC., Plaintiff, v. NEPHRO-TECH, INC. and G.P. Georges III, Defendants.
• Court: U.S. District Court — District of Kansas

81 F.Supp.2d 1122

BRAINTREE LABORATORIES, INC., Plaintiff, v. NEPHRO-TECH, INC. and G.P. Georges III, Defendants.

No. 96-2459-JWL.

United States District Court, D. Kansas.

January 7, 2000.

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COPYRIGHT MATERIAL OMITTED

Craig T. Kenworthy, Swanson Midgley, LLC, Kansas City, MO, Arthur A. Smith, Jr., Boston, MA, Thomas D. Henteleff, Prescott M. Lassman, Kleinfeld, Kaplan and Becker, Washington, DC, for Plaintiff.

Mark E. Brown, Marcia J. Rodgers, Litman, Kraai & Brown, L.L.C., Kansas City, MO, Steven H. Mustoe, Eric C. Carter, Kurlbaum Stoll Seaman & Mustoe, P.C., Kansas City, MO, for Defendant.

MEMORANDUM AND ORDER

LUNGSTRUM, District Judge.

Plaintiff Braintree Laboratories, Inc., the assignee of United States Patent No. 4,870,105, (hereafter the "'105 patent") brought this patent infringement action against defendants Nephro-Tech, Inc. and G.P. Georges III, alleging that defendants' marketing and distribution of their calcium acetate product infringes the '105 patent. A jury trial in this matter was held before this court between September 28, 1999 and October 7, 1999. On October 7, 1999, the jury returned a verdict in favor of plaintiff, finding the '105 patent valid and infringed, and awarding damages in the amount of $300,000. Presently before the court are plaintiff's motion to alter or amend the judgment (doc. 147) and defendants' motion for judgment as a matter of law, or in the alternative, for new trial (doc. 145). For the reasons set forth below, plaintiff's motion is granted in part and denied in part, and defendant's motion is denied.

I. Background

Plaintiff Braintree Laboratories, Inc. ("Braintree"), a Massachusetts corporation, is the assignee of the patent in suit, which was issued by the United States Patent and Trademark Office ("PTO") in favor of John S. Fordtran on September 26, 1989. Plaintiff markets a drug under the brand name Phos-Lo, which implements plaintiff's patented use of calcium acetate to treat kidney dialysis patients. The calcium in plaintiff's drug binds with excess phosphorus in the lower gastrointestinal tract to form an insoluble salt, thereby facilitating the excretion of phosphorous contained in food. Because diseased kidneys are unable to effectively eliminate phosphorus, a task normally accomplished by healthy kidneys, plaintiff's drug is useful to end-stage renal disease ("ESRD") patients.

Defendants market a calcium acetate product under the brand name Calphron. According to defendants, their product is marketed and sold as a calcium supplement, and as such, does not infringe plaintiff's method-of-use patent. Defendants further contend that plaintiff's patent is invalid for obviousness or anticipation, and that it is unenforceable because plaintiff engaged in inequitable conduct before the PTO during the reexamination proceedings.

On July 23, 1999, defendants' motion for summary judgment on the issue of patent validity was denied by the court. The case then proceeded to a trial on the merits. On October 7, 1999, following a trial by jury, the jury returned a verdict in favor of plaintiff, finding the '105 patent valid and infringed. The parties filed post-trial motions.

II. Legal Standards

It is well-settled that, as a general rule, "in deciding procedural questions that involve no special issues relating to patent law," the Federal Circuit applies the law of the regional circuit in which the trial court sits. Sun-Tek Indus. v. Kennedy Sky Lites, Inc., 856 F.2d 173, 175 (Fed.Cir. 1988). Accordingly, the court analyzes the parties' post-trial motions involving procedural matters not unique to the area of patent law in light of Tenth Circuit law. Payless Shoesource, Inc. v. Reebok Int'l, Ltd., 998 F.2d 985, 987 (Fed.Cir.1993).

A. Post-Verdict Motion for Judgment as a Matter of Law¹

A motion for judgment notwithstanding the verdict ("judgment n.o.v.") under Fed.R.Civ.P. 50 "may be granted only when, without weighing the credibility of the evidence, there can be but one reasonable conclusion as to the proper judgment." Jackson v. City of Albuquerque, 890 F.2d 225, 230 (10th Cir.1989). Judgment as a matter of law is appropriate "only if the proof is all one way or so overwhelmingly preponderant in favor of the movant as to permit no other rational conclusion." J.I. Case Credit Corp. v. Crites, 851 F.2d 309, 311 (10th Cir.1988). "Judgment n.o.v. should be cautiously and sparingly granted." Lucas v. Dover Corp., 857 F.2d 1397, 1400 (10th Cir.1988). "In determining whether the grant of a motion for judgment n.o.v. is appropriate, the court must view the evidence and indulge all inferences in favor of the party opposing the motion and cannot weigh the evidence, consider the credibility of witnesses or substitute its judgment for that of the jury." Id. (internal citations omitted).

B. Motion for New Trial

Motions for a new trial are committed to the sound discretion of the trial court. Hinds v. General Motors Corp., 988 F.2d 1039, 1046 (10th Cir.1993); McDonough Power Equipment, Inc. v. Greenwood, 464 U.S. 548, 556, 104 S.Ct. 845, 78 L.Ed.2d 663 (1984). They are "not regarded with favor and should only be granted with great caution." United States v. Kelley, 929 F.2d 582, 586 (10th Cir.1991). Where a jury's verdict is challenged as contrary to the evidence, the court's "inquiry focuses on whether the verdict is clearly, decidedly or overwhelmingly against the weight of the evidence." Black v. Hieb's Enters., Inc., 805 F.2d 360, 363 (10th Cir.1986).

III. Discussion

A. Defendants' Post-Trial Motion

In their post-trial motion, defendants move for judgment as a matter of law with respect to the issues of infringement, validity, G.P. Georges III's individual liability, and damages. Additionally, defendants request the court declare the '105 patent unenforceable on the ground that plaintiff engaged in inequitable conduct before the PTO. Alternatively, defendants move the court to order a new trial in this case. As detailed below, the court denies defendants' motion in its entirety.

1. Motion for JMOL

In their papers, defendants move for judgment as a matter of law on the issues of damages, patent infringement, patent validity, and G.P. Georges III's individual liability on the ground that there exists no substantial evidence to support the jury's verdict with respect to these issues. In response, plaintiff argues that defendants are precluded from seeking judgment as a matter of law on any of the above matters for failure to move for judgment as a matter of law at the close of all the evidence and before the case was submitted to the jury. The court agrees.

Rule 50(b) of the Federal Rules of Civil Procedure provides, in pertinent part:

If, for any reason, the court does not grant a motion for judgment as a matter of law made at the close of all the evidence, the court is considered to have submitted the action to the jury subject to the court's later deciding the legal questions raised by the motion. The movant may renew its request for judgment as a matter of law by filing a motion no later than 10 days after entry of judgment....

Fed.R.Civ.P. 50(b). As interpreted by the Tenth Circuit, Rule 50 precludes a party "from relying upon grounds in a motion for judgment notwithstanding the verdict that were not previously raised in support of the motion for a directed verdict." First Security Bank of Beaver, Oklahoma v. Taylor, 964 F.2d 1053, 1057 (10th Cir. 1992). Furthermore, "[a]s a general rule, a defendant's motion for directed verdict made at the close of the plaintiff's evidence is deemed waived if not renewed at the close of all the evidence; failure to renew that motion bars consideration of a later motion for judgment n.o.v." Karns v. Emerson Elec. Co., 817 F.2d 1452, 1455 (10th Cir.1987).

A limited exception to the general rule precluding consideration of a post-trial motion for JMOL due to the movant's failure to move for a directed verdict at the close of all of the evidence has been recognized by the Tenth Circuit. Id. at 1456. That exception may be invoked where:

(1) the defendant moved for directed verdict at the close of the plaintiff's evidence; (2) the trial court, in ruling on the motion, somehow indicated that renewal of the motion would not be necessary in order to preserve the issues raised; and (3) the evidence introduced after the motion was brief.

Id.

As correctly noted by defendants, the Tenth Circuit does not require unflagging adherence to the language of Fed. R.Civ.P. 50, and has stated that such motions are to be construed liberally and "do not require technical precision as long as the trial court is aware of the movant's position." Aguinaga v. United Food and Commercial Workers Int'l Union, 993 F.2d 1463, 1470 (10th Cir.1993). The cases cited by defendants do not, however, support their view that such leniency toward technically imprecise Rule 50 motions may somehow extend to excuse a party's complete failure to move for directed verdict at the close of all the evidence. Instead, the cases cited by defendants stand for the proposition that, where a party has moved for directed verdict, the rule of liberal construction vis-à-vis Rule 50 motions protects against a party's failure to identify with absolute specificity the precise grounds for its motion. See, e.g., Anderson v. United Telephone Co. of Kansas, 933 F.2d 1500, 1503-04 (10th Cir.1991) (defendant's motion for directed verdict on plaintiff's civil blacklisting claim sufficient under Rule 50 despite perceived lack of precise specificity as to the grounds on which defendant believed the evidence to be insufficient); National Indus., Inc. v. Sharon Steel Corp., 781 F.2d 1545, 1549 (11th Cir.1986) ("There is no question that Sharon moved for a directed verdict at the close of all the evidence; the issue is whether that motion encompassed damages for lost goodwill and reputation.")

The court further rejects defendants' argument that plaintiff's ...