Papst Licensing GMBH & Co. KG v. Samsung Elecs. Co.

• Decision Date: 30 August 2019
• Docket Number: CIVIL ACTION NO. 6:18-CV-00388-RWS
• Citation: 403 F.Supp.3d 571
• Parties: PAPST LICENSING GMBH & CO., KG, Plaintiff, v. SAMSUNG ELECTRONICS CO., LTD and Samsung Electronics America, Inc., Defendants.
• Court: U.S. District Court — Eastern District of Texas

403 F.Supp.3d 571

PAPST LICENSING GMBH & CO., KG, Plaintiff,

v.SAMSUNG ELECTRONICS CO., LTD and Samsung Electronics America, Inc., Defendants.

CIVIL ACTION NO. 6:18-CV-00388-RWS

United States District Court, E.D. Texas, Tyler Division.

Signed August 30, 2019

Christopher V. Goodpastor, Adam G. Price, Andrew Gerald DiNovo, Gabriel Ross Gervey, Nicole E. Glauser, DiNovo Price Ellwanger & Hardy LLP, Austin, TX, Andrea Leigh Fair, Claire Abernathy Henry, Jack Wesley Hill, Thomas John Ward, Jr., Ward, Smith & Hill, PLLC, Longview, TX, for Plaintiff.

Patrick J. Kelleher, Carrie Anne Beyer, Drinker Biddle & Reath, Chicago, IL, Stephen Edward McConnico, Kimberly Gustafson Bueno, Scott Douglass & McConnico LLP, Austin, TX, John Frederick Bufe, Michael E. Jones, Patrick Colbert Clutter, IV, Robert E. Sterken, III, Potter Minton, a Professional Corporation, Tyler, TX, Wayne B. Mason, Drinker Biddle & Reath LLP, Dallas, TX, Francis DiGiovanni, Thatcher Albert Rahmeier, Drinker Biddle & Reath LLP, Wilmington, DE, Nick Colic, Drinker Biddle & Reath LLP, Washington, DC, for Defendants.

MEMORANDUM OPINION AND ORDER

ROBERT W. SCHROEDER III, UNITED STATES DISTRICT JUDGE

Before the Court are Plaintiff Papst Licensing GmbH & Co., KG ("Papst") and Defendants Samsung Electronics Co., Ltd and Samsung Electronics America, Inc.'s (collectively, "Samsung") motions for post-trial relief. Having considered the parties' written submissions and the arguments at the July 11, 2019 hearing, the Court rules as follows:

• Samsung's Motion to Contact Jurors (Docket No. 319) is DENIED ;

• Samsung's Renewed Motion for Judgment as a Matter of Law, or in the Alternative, for a New Trial on Issues Related to Liability (Docket No. 329) is DENIED ;

• Samsung's Renewed Motion for Judgment as a Matter of Law, or in the Alternative, for a New Trial on Issues Related to Damages (Docket No. 330) is DENIED ;

• Papst's Motion for Entry of Judgment (Docket No. 333) is DENIED WITHOUT PREJUDICE .

BACKGROUND

On November 30, 2015, Papst filed suits against Samsung (Case No. 6:15-cv-1102) and Lenovo (United States) Inc. and Motorola Mobility LLC (collectively, "Motorola") (Case No. 6:15-cv-1111) alleging infringement of U.S. Patent Nos. 6,470,399 ("the '399 patent"), 8,504,746 ("the '746 patent"), 8,966,144 ("the '144 patent"), 9,189,437 ("the '437 patent") and. 6,895,449 ("the '449 patent"). These suits, along with suits filed against Defendants Huawei, LG and ZTE, were consolidated with the lead action against Apple, Inc. (Case No. 6:15-cv-1095) for pretrial purposes, except venue. See Case No. 6:15-cv-1095, Docket No. 47.¹ Papst also asserted the '399 and '449 patents against several digital camera manufacturers in a Multi-District Litigation (MDL) currently pending in the District Court for the District of Columbia. In re Papst Licensing GmbH & Co. KG Patent Litigation , MDL No. 1880, Case No: 1:07-mc-793-RDM (D.D.C. 2018).

Between June 14, 2016 and December 29, 2017, a number of Defendants in this action and in the MDL filed a combined 37 petitions for inter partes review ("IPR"), including two IPR petitions against the '449 patent. The Patent Trial and Appeal Board ("PTAB") issued Final Written Decisions ("FWD") cancelling all instituted claims, including all asserted claims of the '399, '746, '144, and '437 patents. Conversely, all IPRs against the '449 patent terminated without any of the claims being cancelled. Two IPRs were denied institution and the petitioners of the instituted IPRs settled the dispute without a FWD. Because none of the IPRs concerning the '449 patent reached a FWD, there were no appeals pending on the asserted claims of the '449 patent. Accordingly, Papst agreed to stay the case pending appeals on the '399, '746, '144 and '437 patents, but disputed a stay as to the '449 patent. See Docket No. 1. Papst then stayed or settled its disputes with all defendants in the lead case, Case No. 6:15-cv-1095, except Samsung and Motorola related to the '449 patent. See id.

Samsung argued that the '449 patent substantially overlaps with claims found unpatentable by the PTAB and that many of the terms used in the '449 patent are identical to terms at issue in the pending IPR appeals. See Case No. 6:15-cv-1095, Docket No. 718 at 4. Samsung also argued that the Federal Circuit's analysis of the scope and content of the identical prior art references would inform these proceedings. Id. The Court rejected Samsung's arguments, finding that the terms Samsung specifically identified, "customary" and "communication," were either not addressed in the Markman briefing or not at issue in the IPR appeals. See Docket No. 1 at 8. The Court also noted that the specific prior art combination used by the PTAB, the "Kawaguchi/Schmidt combination" was not elected by Samsung and that a stay would therefore not simplify the issues. Id.

Accordingly, claims 1 and 17 of the '449 patent were severed into a new cause of action, the present case, with a trial date of October 30, 2018. See id. On October 19, 2018, Papst and Motorola notified the Court that they had settled their dispute, leaving Samsung as the sole remaining defendant for trial on infringement of the '449 patent. See Docket Nos. 219, 226. The Court held a jury trial in this matter from October 30, 2018 to November 6, 2018. After the six-day trial, the jury reached a verdict, finding that the '449 patent was not invalid, that Samsung infringed claims 1 and 17 of the '449 patent and that Samsung's infringement was not willful. See Docket Nos. 294, 298. The jury awarded Papst $5,924,374.00. See Docket No. 294.

Following the verdict, Samsung filed a renewed Motion for Judgment as a Matter of Law, or in the Alternative, for a New Trial on Issues Related to Liability (Docket No. 329) and a renewed Motion for Judgment as a Matter of Law, or in the Alternative, for a New Trial on Issues Related to Damages (Docket No. 330). Papst filed a Motion for Entry of Judgment seeking costs, interest, supplemental damages, and fees (Docket No. 333). Samsung also filed a Motion to Contact Jurors (Docket No. 319). The Court heard argument on these motions on July 11, 2019. See Docket No. 378. The Court addresses the motions below.

LEGAL STANDARD

Judgment as a matter of law is only appropriate when "a reasonable jury would not have a legally sufficient evidentiary basis to find for the party on that issue." FED. R. CIV. P. 50(a). "The 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." Finisar Corp. v. DirecTV Group, Inc. , 523 F.3d 1323, 1332 (Fed. Cir. 2008).

Under Fifth Circuit law, a court is to be "especially deferential" to a jury's verdict and must not reverse the jury's findings unless they are not supported by substantial evidence. Baisden v. I'm Ready Prods., Inc. , 693 F.3d 491, 499 (5th Cir. 2012). "Substantial evidence is defined as evidence of such quality and weight that reasonable and fair-minded men in the exercise of impartial judgment might reach different conclusions." Threlkeld v. Total Petroleum, Inc. , 211 F.3d 887, 891 (5th Cir. 2000). The Court will "uphold a jury verdict unless the facts and inferences point so strongly and so overwhelmingly in favor of one party that reasonable men could not arrive at any verdict to the contrary." Cousin v. Trans Union Corp. , 246 F.3d 359, 366 (5th Cir. 2001) ; see also Int'l Ins. Co. v. RSR Corp. , 426 F.3d 281, 296 (5th Cir. 2005). However, "[t]here must be more than a mere scintilla of evidence in the record to prevent judgment as a matter of law in favor of the movant." Arismendez v. Nightingale Home Health Care, Inc. , 493 F.3d 602, 606 (5th Cir. 2007) (citing Laxton v. Gap, Inc. , 333 F.3d 572, 577 (5th Cir. 2003) ).

In evaluating a motion for judgment as a matter of law, a court must "draw all reasonable inferences in the light most favorable to the verdict and cannot substitute other inferences that [the court] might regard as more reasonable." E.E.O.C. v. Boh Bros. Const. Co., L.L.C. , 731 F.3d 444, 451 (5th Cir. 2013). Although the court must review the record as a whole, it must disregard all evidence favorable to the moving party that the jury is not required to believe.

Ellis v. Weasler Eng'g Inc. , 258 F.3d 326, 337 (5th Cir. 2001). However, a court may not make credibility determinations or weigh the evidence, as those are solely functions of the jury. See id. (citing Reeves v. Sanderson Plumbing Prods., Inc. , 530 U.S. 133, 150–51, 120 S.Ct. 2097, 147 L.Ed.2d 105 (2000) ). The Court gives "credence to evidence supporting the moving party that is uncontradicted and unimpeached if that evidence comes from disinterested witnesses." Arismendez , 493 F.3d at 606.

Under Federal Rule of Civil Procedure 59(a), a new trial may be granted on any or all issues "for any reason for which a new trial has heretofore been granted in an action at law in federal court." FED. R. CIV. P 59(a)(1)(A). The Federal Circuit reviews the question of a new trial under the law of the regional circuit. Z4 Techs., Inc. v. Microsoft Corp. , 507 F.3d 1340, 1347 (Fed. Cir. 2007). The court can grant a new trial "based on its appraisal of the fairness of the trial and the reliability of the jury's verdict." Smith v. Transworld Drilling Co. , 773 F.2d 610, 612–13 (5th Cir. 1985). "Courts grant a new trial when it is reasonably clear that prejudicial error has crept into the record or that substantial justice has not been done, and the burden of showing harmful error rests on the party seeking the new trial." Sibley v. Lemaire , 184 F.3d 481, 487 (5th Cir. 1999) (quoting Del Rio Distributing, Inc. v. Adolph Coors Co. , 589 F.2d 176, 179 n.3 (5th Cir. 1979) ). "A new trial may be granted, for example, if the district court finds the verdict is against the weight of the evidence, the damages awarded are excessive, the trial was unfair, or...