Exmark Mfg. Co. v. Briggs & Stratton Power Prods. Grp., LLC
| Decision Date | 12 January 2018 |
| Docket Number | 2016-2197 |
| Citation | 879 F.3d 1332 |
| Parties | EXMARK MANUFACTURING COMPANY INC., Plaintiff–Appellee v. BRIGGS & STRATTON POWER PRODUCTS GROUP, LLC, Defendant–Appellant |
| Court | U.S. Court of Appeals — Federal Circuit |
J. Derek Vandenburgh, Carlson, Caspers, Vandenburgh, Lindquist & Schuman, P.A., Minneapolis, MN, argued for plaintiff-appellee. Also represented by Joseph W. Winkels, Alexander Rinn.
Matthew Wolf, Arnold & Porter Kaye Scholer LLP, Washington, DC, argued for defendant-appellant. Also represented by Marc A. Cohn.
Before Wallach, Chen, and Stoll, Circuit Judges.
Exmark Manufacturing Company filed suit against Briggs & Stratton Power Products Group, LLC in the United States District Court for the District of Nebraska, alleging infringement of, inter alia, claim 1 of U.S. Patent No. 5,987,863. The district court entered summary judgment that claim 1 was not invalid because the claim survived multiple reexaminations involving the same prior art. The district court also denied summary judgment of indefiniteness with respect to claim 1.1 The case proceeded to a jury trial, where the jury found that Briggs willfully infringed Exmark's patent. The jury awarded $24,280,330 in compensatory damages, which the district court doubled as enhanced damages for Briggs' willful infringement.
Briggs appeals several of the district court's orders, including the district court's: (1) summary judgment that claim 1 is not anticipated or obvious, (2) denial of summary judgment that claim 1 is indefinite, (3) denial of a new trial on damages, (4) evidentiary rulings related to damages, (5) denial of a new trial on willfulness, and (6) denial of Briggs' laches defense.
We conclude the district court erred by basing its summary judgment of no invalidity solely on the fact that claim 1 survived multiple reexaminations. Accordingly, we vacate the district court's summary judgment of no invalidity. We remand to the district court for it to make an independent determination of whether genuine issues of material fact preclude summary judgment that claim 1 is not anticipated or obvious in view of the prior art. We also hold that the district court erred in denying a new trial on damages because Exmark's damages expert failed to provide an adequate explanation as to how she arrived at a 5% royalty rate for the patented feature relative to other conventional features of the accused products. We also conclude that the district court abused its discretion by limiting the evidence relevant to damages to prior art that had been commercialized. Likewise, we conclude that the district court abused its discretion by excluding from the willfulness trial evidence relating to patent validity based on its determination that Briggs' invalidity defenses were objectively unreasonable. The district court's evidentiary ruling does not comport with the Supreme Court's recent decision in Halo Electronics, Inc. v. Pulse Electronics, Inc. , ––– U.S. ––––, 136 S.Ct. 1923, 195 L.Ed.2d 278 (2016), mandating that willfulness is to be determined by the jury regardless of whether Briggs' defenses were objectively reasonable. Accordingly, we vacate the jury's finding of willfulness, vacate the jury's damages award, vacate the district court's enhanced damages award, and remand for proceedings consistent with this precedent. We also affirm the district court's denial of summary judgment that claim 1 is indefinite, and affirm its denial of Briggs' laches defense.
Briggs and Exmark are competitors in the high-end commercial lawn mower industry. Exmark filed suit against Briggs and Schiller Grounds Care, Inc.,2 alleging, inter alia, infringement of claim 1 of the '863 patent. The '863 patent is directed to a lawn mower having improved flow control baffles. A baffle is a metal structure under the mower deck that directs air flow and grass clippings during operation.
Claim 1 requires a side wall discharge opening and a "first flow control baffle" having a certain shape. Specifically, the claim recites that the first baffle comprises "a first arcuate baffle portion," "a first elongated and substantially straight baffle portion," and "a second arcuate baffle portion," with the elongated and substantially straight baffle portion "angularly disposed ... in a chord-like fashion" with respect to the second cutting blade. Id . at col. 6 ll. 21–39. The parties refer to this as a "curved-straight-curved" baffle.
On appeal, Briggs provides an annotated version of Figure 4 of the '863 patent depicting the claimed curved-straight-curved baffle.
Claim 1 recites in relevant part:
'863 patent col. 5 l. 60–col. 6 l. 50.
Claim 1 of the '863 patent was reexamined by the United States Patent and Trademark Office on three occasions. Exmark requested the first reexamination, which was completed prior to the present suit, and the PTO confirmed the patentability of claim 1. The second and third reexaminations were requested by Defendants Schiller and Briggs during the pendency of this case before the district court. The district court stayed proceedings pending completion of the reexaminations. The patentability of claim 1 over the same prior art asserted in the district court was confirmed in both reexaminations.
Following the reexaminations, the district court lifted the stay, and Exmark moved for summary judgment that claim 1 was not invalid as anticipated or obvious. Relying solely on the fact that claim 1 survived multiple reexaminations, the district court concluded that "no reasonable juror could find that the defendants have met their burden of proving by clear and convincing evidence that the claims of the patent are invalid." Exmark Mfg. Co. v. Briggs & Stratton Power Prods. Grp., LLC , No. 8:10CV187, 2015 WL 12697086, at *11 (D. Neb. July 28, 2015) (" Summary Judgment Order ").
Briggs also moved for summary judgment that the claim limitation "elongated and substantially straight" rendered claim 1 of the '863 patent indefinite. The district court denied Briggs summary judgment, concluding that the specification informs one skilled in the art with reasonable certainty as to the claim limitation's meaning. Id .
The district court granted summary judgment of infringement by Briggs' original mowers. At the same time, however, the district court found that genuine issues of material fact precluded summary judgment of infringement by Briggs' redesigned mowers. Id. at *12.
The case proceeded to trial on whether Briggs' redesigned mowers infringed claim 1, whether Briggs willfully infringed, and damages. The jury found that Briggs willfully infringed claim 1 of the '863 patent with respect to its originally designed mowers but found that its redesigned mowers did not infringe claim 1. The jury awarded $24,280,330 in damages.
Following the jury trial, the district court held a bench trial on Briggs' motion for a judgment of laches. The district court denied the motion, concluding that Briggs had not shown that it was entitled to the equitable defense of laches. See Exmark Mfg. Co. v. Briggs & Stratton Power Prods. Grp., LLC , 186 F.Supp.3d 977, 988 (D. Neb. 2016). The district court also denied Briggs' post-trial motion for a new trial on damages and willfulness. See Exmark Mfg. Co. v. Briggs & Stratton Power Prods. Grp., LLC , No. 8:10CV187, 2016 WL 2772122, at *7 (D. Neb. May 11, 2016). The district court granted Exmark's motion for enhanced damages based on Briggs' willful infringement and doubled the jury's damages award. See Exmark Mfg. Co. v. Briggs & Stratton Power Prods. Grp., LLC , No. 8:10CV187, 2016 WL 2772123, at *6 (D. Neb. May 11, 2016).
Briggs appeals. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).
We begin by addressing the district court's summary judgment that claim 1 of the '863 patent is not invalid.
We review the district court's grant of summary judgment according to the law of the regional circuit. Phil–Insul Corp. v. Airlite Plastics Co. , 854 F.3d 1344, 1353 (Fed. Cir. 2017). The Eighth Circuit reviews a district court's grant of summary judgment de novo. Id. (citing Wilson v. Spain , 209 F.3d 713, 716 (8th Cir. 2000) ). "Summary judgment is appropriate 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.' " Id. (quoting Fed. R. Civ. P. 56(a) ).
Briggs argues that the district court erred by granting summary judgment...
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