Bowling v. Hasbro, Inc., C.A. No. 05-229 S.

• Decision Date: 23 August 2008
• Docket Number: C.A. No. 05-229 S.
• Citation: 582 F.Supp.2d 192
• Parties: Michael BOWLING, Plaintiff, v. HASBRO, INC., Defendant.
• Court: U.S. District Court — District of Rhode Island

582 F.Supp.2d 192

Michael BOWLING, Plaintiff, v. HASBRO, INC., Defendant.

C.A. No. 05-229 S.

United States District Court, D. Rhode Island.

August 23, 2008.

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

Christine K. Bush, Esq., Craig M. Scott, Esq., Duffy Sweeney & Scott, Ltd., Providence, RI, Douglas J. Williams, Esq., Thomas J. Leach, Esq., Anthony R. Zeuli, Esq., Merchant & Gould P.C., Minneapolis, MN, for Plaintiff.

Jeffrey K. Techentin, Esq., Todd D. White, Esq., Adam M. Ramos, Esq., Minette Marie Loula, Esq., Adler Pollock & Sheehan P.C., Providence, RI, David K.S. Cornwell, Tracey-Gene G. Durkin, Sterne Kessler Goldstein & Fox P.L.L.C., Washington, DC, for Defendant.

OPINION AND ORDER

WILLIAM E. SMITH, District Judge.

This patent infringement action was brought by Plaintiff Michael Bowling ("Bowling"), a professional engineer and "afficionado of fantasy role-playing games, such as Dungeons & Dragons," against Hasbro, Inc. ("Hasbro") alleging infringement of Bowling's United States Patent No. 5,938,197 (the "`197 patent"). Bowling v. Hasbro, 490 F.Supp.2d 262, 264 (D.R.I. 2007) ("Bowling I"). The '197 patent describes several polyhedral dice, one of which, the six-sided die, is the main subject of this dispute. Bowling alleges that Hasbro, the toy and game company, infringed on his patent during a period of time in 1999 and 2000 by using a similar die in its "Monopoly, Millennium" and "Avon Special" editions of the Monopoly game.¹ Over the course of pre-trial proceedings in this matter, the various claims and counter-claims of the parties were whittled down, leaving for trial only the issue of damages for infringement and Hasbro's counterclaim of inequitable conduct on Bowling's part.

The case was tried to a jury over the course of six days beginning on March 17, 2008. The jury returned a verdict in favor of Bowling totaling $446,182.40; found that Bowling had continuously marked substantially all of his dice or die packaging from August 17, 1999; but that Bowling had failed to show by clear and convincing evidence that Hasbro's infringement was willful. Before this Court is the remaining claim of inequitable conduct, which was not tried to the jury, as well as numerous posttrial motions by both parties, including Hasbro's Motion for Judgment as a Matter of Law ("JMOL") or, in the Alternative, for a New Trial or, in the Alternative, for Remittitur.²

I. Inequitable Conduct

Hasbro maintains that statements made by Bowling in his January 6, 1998 patent application to the Patent and Trademark Office ("PTO") constitute inequitable conduct and that such conduct renders the '197 patent unenforceable. At issue, specifically, are certain representations in the application in which Bowling asserts that "[t]he inventor has discovered that the configuration of the die [ ] is advantageous," and describes the die characteristics that create those advantages. Bowling has since admitted, via deposition and as a witness at trial, that at the time he filed his application he had not yet made a prototype of the dice, but instead based his statements on personal observation, his understanding of the physics of die design, and his general experience with dice. This, Hasbro maintains, is tantamount to knowing misrepresentation.

Patent applicants must prosecute their patent applications in the PTO "with candor, good faith, and honesty." Molins PLC v. Textron, Inc., 48 F.3d 1172, 1178 (Fed.Cir.1995). Breach of this duty constitutes inequitable conduct. Id. In order for a patent to be considered unenforceable, "there must be clear and convincing evidence that the applicant (1) made an affirmative misrepresentation of material fact, failed to disclose material information, or submitted false material information, and (2) intended to deceive" the PTO. Cargill Inc. v. Canbra Foods, Ltd., 476 F.3d 1359, 1363 (Fed.Cir.2007). Both essential elements—materiality and intent—must be proven by clear and convincing evidence. M. Eagles Tool Warehouse, Inc. v. Fisher Tooling Co., 439 F.3d 1335, 1340 (Fed.Cir. 2006). If both are proven, "[t]he court must then determine whether the questioned conduct amounts to inequitable conduct by balancing the levels of materiality and intent, `with a greater showing of one factor allowing a lesser showing of the other.'" Digital Control Inc. v. Charles Mach. Works, 437 F.3d 1309, 1313 (Fed. Cir.2006) (citations omitted).

PTO Rule 56, see 37 C.F.R. § 1.56(b), provides:

[I]nformation is material to patentability when it is not cumulative to information already of record or being made of record in the application, and

(1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim, or

(2) It refutes, or is inconsistent with, a position the applicant takes in:

(i) Opposing an argument of unpatentability relied on by the Office, or (ii) Asserting an argument of patentability.

A prima facie case of unpatentability is established when the information compels a conclusion that a claim is unpatentable under the preponderance of evidence, burden-of-proof standard, giving each term in the claim its broadest reasonable construction consistent with the specification, and before any consideration is given to evidence which may be submitted in an attempt to establish a contrary conclusion of patentability.

See also Cargill, 476 F.3d at 1364. Additionally, under the so-called "reasonable examiner" standard, information is material if "there is a substantial likelihood that a reasonable examiner would consider it important in deciding whether to allow the application to issue as a patent." Id. (quotations omitted). In either case, "affirmative misrepresentations by the patentee, in contrast to misleading omissions, are more likely to be regarded as material." Hoffmann-La Roche, Inc. v. Promega Corp., 323 F.3d 1354,1367 (Fed.Cir.2003).

Misrepresentation alone is insufficient to render a patent unenforceable. Id. at 1366-67. Instead, "the misrepresentations must be intentional and they must be material to patentability." Id. To establish the requisite intent to deceive, "the involved conduct, viewed in light of all the evidence, including evidence indicative of good faith, must indicate sufficient culpability to require a finding of intent to deceive." Cargill, 476 F.3d at 1364. Finally, there must be a factual basis for a finding of intent. M. Eagles Tool, 439 F.3d at 1340. While intent may not be inferred solely from the fact that information was not disclosed, id., it may be inferred from the facts and circumstances surrounding the conduct at issue. Cargill, 476 F.3d at 1364.

Here, there is scant evidence to support a finding of misrepresentation or intent to deceive.³ Bowling never represented that he had produced a prototype of the die when he applied for the patent, and Hasbro has produced no evidence that the patent would not have been granted had the PTO been aware that no prototype then existed. Furthermore, Hasbro has produced no evidence of an intent to deceive on Bowling's part. Instead, Bowling testified at trial that he considers the statements made in his application to be both accurate and true. In conclusion, the evidence is insufficient to establish that any statement made to the PTO by Bowling was either a misrepresentation or intended to deceive, and thus Hasbro's claim of inequitable conduct fails.

II. Hasbro's Renewed Motion for Judgment as a Matter of Law or, in the Alternative, for a New Trial, or in the Alternative, for Remittitur.

Hasbro contends that Bowling failed to offer cognizable evidence of damages and that as a result, judgment as a matter of law in Hasbro's favor is warranted. Alternately, Hasbro maintains that if damages are warranted, they should be nominal, calculated either by virtue of a new trial or remittitur. "A motion for judgment as a matter of law only may be granted when, after examining the evidence of record and drawing all reasonable inferences in favor of the nonmoving party, the record reveals no sufficient evidentiary basis for the verdict." Zimmerman v. Direct Fed. Credit Union, 262 F.3d 70, 75 (1st Cir.2001); Chrabaszcz v. Johnston Sch. Comm., 474 F.Supp.2d 298, 311 (D.R.I.2007). The Court must view the facts in the light most favorable to the plaintiff, drawing all reasonable inferences in his favor. Lama v. Borras, 16 F.3d 473, 475 (1st Cir.1994). Further, the Court's role is not to "evaluate the credibility of the witnesses or the weight of the evidence." Chrabaszcz, 474 F.Supp.2d at 311. Thus, the jury verdict must stand "unless the evidence, taken in the light most favorable to the prevailing party, points unerringly to an opposite conclusion." Zimmerman, 262 F.3d at 75.

A. Bowling Satisfied the Marking Requirements

First, Hasbro maintains that Bowling failed to sustain his burden of proving that he marked his patented dice, and that as a result, Hasbro can be held liable for damages only beginning on November 10, 1999, the date upon which it received actual notice of infringement. In order to recover damages, a patentee must prove by a preponderance of the evidence that he has complied with the relevant marking statute. Nike, Inc. v. Wal-Mart Stores, Inc., 138 F.3d 1437, 1446 (Fed.Cir. 1998). Sufficient marking is established "either by fixing thereon the word `patent' or the abbreviation `pat.', together with the number of the patent, or when, from the character of the article, this can not be done, by fixing to it, or to the package wherein one or more of them is contained, a label containing a like notice." 35 U.S.C. § 287(a). A patentee must also show that "once marking was begun, the marking was substantially consistent and continuous." Cybiotronics, Ltd. v. Golden Source Elecs. Ltd., 130 F.Supp.2d 1152, 1160 (C.D.Cal.2001). Without satisfaction of the marking requirement, unless...