Fair Isaac Corp. v. Experian Info. Solutions Inc, Civil No. 06-4112 ADM/JSM.

• Decision Date: 10 May 2010
• Docket Number: Civil No. 06-4112 ADM/JSM.
• Citation: 711 F.Supp.2d 991
• Parties: FAIR ISAAC CORPORATION and myFico Consumer Services, Inc., Plaintiffs,v.EXPERIAN INFORMATION SOLUTIONS INC.; Trans Union, LLC; VantageScore Solutions, LLC; and Does I through X, Defendants.
• Court: U.S. District Court — District of Minnesota

711 F.Supp.2d 991

FAIR ISAAC CORPORATION and myFico Consumer Services, Inc., Plaintiffs,v.EXPERIAN INFORMATION SOLUTIONS INC.; Trans Union, LLC; VantageScore Solutions, LLC; and Does I through X, Defendants.

Civil No. 06-4112 ADM/JSM.

United States District Court D. Minnesota.

May 10, 2010.

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

Ronald J. Schutz, Esq., Randall Tietjen, Esq., Michael A. Collyard, Esq., Christopher K. Larus, Esq., David W. Beehler, Esq., Laura A. Nelson, Esq., and Mary E. Kiedrowski, Esq., Robins, Kaplan, Miller & Ciresi, LLP, Minneapolis, MN, on behalf of Plaintiffs.

Mark A. Jacobson, Esq., Mark H. Zitzewitz, Esq., Lindquist & Vennum PLLP, Minneapolis, MN, and M. Elaine Johnston, Esq., Robert A. Milne, Esq., Christopher J. Glancy, Esq., Jack E. Pace, III, Esq., Bryan D. Gant, Esq., White & Case LLP, New York, NY, on behalf of Experian Information Solutions Inc.

Lewis A. Remele, Jr., Esq., Christopher R. Morris, Esq., Bassford Remele, Minneapolis, MN, and James K. Gardner, Esq., Ralph T. Russell, Esq., Dao L. Boyle, Esq., Neal, Gerber & Eisenberg LLP, Chicago, IL, on behalf of Trans Union, LLC.

Barbara Podlucky Berens, Esq., Justi Rae Miller, Esq., Kelly & Berens, PA, Minneapolis, MN, on behalf of VantageScore Solutions, LLC.

MEMORANDUM OPINION AND ORDER

ANN D. MONTGOMERY, District Judge.

I. INTRODUCTION

On February 23, 2010, the undersigned United States District Judge heard oral argument on five post-trial motions: (1) Plaintiffs Fair Isaac Corporation and myFICO Consumer Services, Inc.'s (collectively “Fair Isaac”) Motion for Judgment as a Matter of Law, a New Trial, or Detailed Findings [Docket No. 986]; (2) Defendants Experian Information Solutions, Inc. (“Experian”), Trans Union, LLC (“Trans Union”), and VantageScore Solutions, LLC's (“VantageScore”) (collectively “Defendants”) Motion to Amend the Judgment to Order Cancellation of Trademark Registration [Docket No. 983]; (3) Trans Union's Motion for Attorneys' Fees and Costs [Docket No. 976] relating to the breach of contract claim; (4) Defendants' Motion for Attorneys' Fees and Related Expenses [Docket No. 978] relating to the Lanham Act claims; and (5) Defendants' Motion to Strike [Docket No. 1046]. For the reasons set forth below, Fair Isaac's motion is denied, Defendants' motion to amend is granted, Defendants' motion for attorneys fees relating to the Lanham Act claims is denied, Trans Union's motion for attorneys' fees relating to the contract claim is granted in part, and Defendants' motion to strike is denied.

II. BACKGROUND

The factual and procedural background of this litigation is set forth in the Court's previous orders and will not be repeated here. See July 24, 2009 Order [Docket No. 694] Fair Isaac Corp. v. Experian Information Solutions, Inc., 645 F.Supp.2d 734 (D.Minn.2009); March 4, 2008 Order [Docket No. 294], 2008 WL 623120. By way of summary, Fair Isaac asserted claims against Defendants for antitrust violations, trademark infringement of its “300-850” trademarks, unfair competition, deceptive trade practices, false advertising, passing off, breach of contract, interference with contract, and misappropriation of trade secrets. Fair Isaac abandoned its claim for misappropriation of trade secrets, and, in July 2009, the Court granted summary judgment in favor of Defendants on Fair Isaac's claims based on antitrust violations, breach of contract, interference with contract, and false advertising. Fair Isaac, 645 F.Supp.2d at 764. The remaining trademark-related claims, as well as Defendants' counterclaim for fraud on the United States Patent and Trademark Office (“PTO”), proceeded to trial on October 29, 2009.

After a three week trial, the Court ruled at the close of evidence that because two of Fair Isaac's claims-the keyword advertising claim and the passing off claim-would, if successful, entitle Fair Isaac to equitable relief only, there was no right to a jury trial on those claims and they would therefore be decided by the Court. See Trial Tr. at 2702-2704. On November 20, 2009, the jury returned a verdict on the remaining claims in favor of Defendants, finding that Fair Isaac's “300-850” trademarks, which the Court previously ruled were descriptive, had not acquired secondary meaning. Special Verdict [Docket No. 968] at 1. The jury also found in favor of Defendants on the counterclaim for fraud on the PTO. Id. at 4. On November 25, 2009, the Court ruled that the credible evidence adduced at trial failed to prove Fair Isaac's equitable claims relating to keyword advertising and passing off. November 25, 2009 Order [Docket No. 969] at 3-4, 2009 WL 4263699.

III. DISCUSSION

A. Standards for Post-Trial Motions

The parties' post-trial motions request amendment of the judgment, judgment as a matter of law, and a new trial. Judgment as a matter of law under Rule 50 of the Federal Rules of Civil Procedure is appropriate only when there is insufficient evidence to permit a reasonable jury to find in favor of the nonmoving party. Gardner v. Buerger, 82 F.3d 248, 251 (8th Cir.1996). The facts must be viewed in the light most favorable to the verdict, assuming that the jury resolved all evidentiary conflicts in favor of the prevailing party. Van Steenburgh v. Rival Co., 171 F.3d 1155, 1158 (8th Cir.1999). The Court will “not weigh, evaluate, or consider the credibility of the evidence.” Triton Corp. v. Hardrives, Inc., 85 F.3d 343, 345 (8th Cir.1996). A jury's verdict should not be overturned unless no reasonable juror could have found in favor of the prevailing party. Van Steenburgh, 171 F.3d at 1158; Ryther v. KARE 11, 108 F.3d 832, 836 (8th Cir.1997). “A jury verdict will not be set aside unless there is a complete absence of probative facts to support a verdict.” Walsh v. National Computer Systems, Inc., 332 F.3d 1150, 1158 (8th Cir.2003) (quotation omitted).

The decision whether to grant a new trial under Federal Rule of Civil Procedure 59(a) is committed to the discretion of the district court. Pulla v. Amoco Oil Co., 72 F.3d 648, 656 (8th Cir.1995). “A new trial is required only when necessary to avoid a miscarriage of justice.” Gearin v. Wal-Mart Stores, Inc., 53 F.3d 216, 219 (8th Cir.1995) (citing McKnight v. Johnson Controls, Inc., 36 F.3d 1396, 1400 (8th Cir.1994)). “While the standard for granting a new trial is less than that for a judgment as a matter of law, a new trial shall be granted only to prevent injustice or when the verdict strongly conflicts with the great weight of evidence.” Maxwell v. Baker, Inc., 160 F.R.D. 580, 581 (D.Minn.1995). Similar to the standard for granting judgment as a matter of law, a district court reviewing a motion for a new trial is “not free to reweigh the evidence and set aside the jury verdict merely because the jury could have drawn different inferences or conclusions or because [the court] feel[s] that other results are more reasonable.” Fireman's Fund Ins. Co. v. Aalco Wrecking Co., Inc., 466 F.2d 179, 186 (8th Cir.1972).

A new trial also may be ordered if the court erred in instructing the jury on the applicable law. T.H.S. Northstar Assocs. v. W.R. Grace & Co.-Conn., 860 F.Supp. 640, 650 (D.Minn.1994) vacated on other grounds, 66 F.3d 173 (8th Cir.1995). A district court, however, has broad discretion in framing instructions and need not give every proposed instruction as long as the court adequately presents the law and the issues to the jury. Fleming v. Harris, 39 F.3d 905, 907 (8th Cir.1994). Moreover, the instructions are to be considered in their entirety to determine whether, when read as a whole, the charge fairly and adequately submits the issues to the jury. Laubach v. Otis Elevator Co., 37 F.3d 427, 429 (8th Cir.1994). “A single erroneous instruction will not necessarily require reversal.” Id.

A motion to amend under Federal Rule of Civil Procedure 59(e) serves the “limited function of correcting manifest errors of law or fact or to present newly discovered evidence.” United States v. Metro. St. Louis Sewer Dist., 440 F.3d 930, 933 (8th Cir.2006) (internal quotation marks omitted). A Rule 59(e) motion is not a vehicle to introduce new evidence, tender new legal theories, or raise arguments that could have been offered or raised before the Court entered judgment. Id.

B. Fair Isaac's Post-Trial Motion

Fair Isaac's motion raises numerous issues. The first challenges the jury's verdict that Defendants proved their affirmative defense and counterclaim of fraud on the PTO. The second issue concerns the Court's ruling regarding the doctrine of licensee estoppel. The third challenges the Court's decision to rule on summary judgment that the term “300-850” is merely descriptive. Fair Isaac's fourth issue relates to the jury's determination of secondary meaning. The fifth issue challenges the Court's decision that there was no right to a jury trial on the passing-off claim. The sixth issue requests a new trial permitting Fair Isaac to present evidence of spoliation and giving the jury an adverse-inference instruction. The final issue challenges the Court's summary judgment ruling on Fair Isaac's false advertising claims.

1. Fraud on the PTO

The jury returned a verdict in favor of Defendants on their affirmative defense and counterclaim of fraud on the PTO, finding that (1) Fair Isaac made a false representation during the application process to the PTO for registrations of the “300-850” marks, (2) Fair Isaac knew that representation to be false when it was made and intended to deceive the PTO, and (3) the PTO relied on the false representation in deciding to issue the registrations. Special Verdict at 4. Fair Isaac argues the verdict must be overturned because the evidence adduced at trial was legally insufficient to prove those three elements of fraud on the PTO by clear and convincing evidence. See Allen Homes, Inc. v. Weersing, 510 F.2d 360, 362 (8th Cir.1975) (proving fraud on the PTO requires clear and convincing evidence).

...