Funai Elec. Co., Ltd. v. Daewoo Electronics Corp.
| Decision Date | 05 January 2009 |
| Docket Number | No. C-04-01830 JCS.,C-04-01830 JCS. |
| Citation | 593 F.Supp.2d 1088 |
| Parties | FUNAI ELECTRIC COMPANY, LTD., Plaintiff, v. DAEWOO ELECTRONICS CORP., et al., Defendants. |
| Court | U.S. District Court — Northern District of California |
Archana Ojha, Gregg Paris Yates, Thomas Kohler, Morgan, Lewis & Bockius LLP, San Francisco, CA, Bernard Hon-Wei Chao, Chao Hadidi Stark & Barker LLP, Menlo Park, CA, David C. Bohrer, Harry Frederick Doscher, Lorraine M. Casto, Michael John Lyons, Morgan Lewis & Bockius, LLP, Victoria Q. Smith, Palo Alto, CA, Stacey E. Stillman, Attorney at Law, Redwood City, CA, for Plaintiff.
Perry Clark, Kirkland & Ellis, LLP, Palo Alto, CA, Jenny N. Lee, Sarah Louise Forney, Kirkland & Ellis LLP, San Francisco, CA, Juan Chardiet, Daniel Mark Press, Chung & Press P.C., McLean, VA, Tai Cho, New York, NY, for Defendants.
[Docket Nos. 699, 710, 712, 714, 716]
In its complaint, Plaintiff Funai Electric Company, Ltd. ("Funai") alleged that various Daewoo entities infringed the following six patents: 1) United States Patent No. 6,021,018 ("'018 patent"); 2) United States Patent No. 6,064,538 ("'538 patent"); 3) United States Patent No. RE37,332 ("'332 patent"); 4) United States Patent No. 6,421,210 ("'210 patent"); 5) United States Patent No. 5,815,218 ("'218 patent"), and 6) United States Patent No. 5,987,209 ("'209 patent"). Two Daewoo entities, Daewoo Electronics Corp., Ltd. and Daewoo Electronics Corp. of America, defaulted and default judgment was entered against them. The remaining defendants, Daewoo Electronics Corporation ("DEC") and Daewoo Electronics America, Inc. ("DEAM"), continued to defend the action.1
On summary judgment, the Court held that the '332, '218 and '209 patents were not infringed, either literally or under the doctrine of equivalents. Questions relating to infringement and invalidity of the remaining patents, as well as the questions of willfulness and damages, were presented to a jury in a 15-day jury trial. The jury found that Daewoo willfully infringed the '018, '210 and '538 patents and that the '210 and '538 patents were not invalid. Based on the infringement, the jury awarded $7,216,698.00 in damages against DEC and $2,298,590.00 against DEAM.
Daewoo now brings a Motion for Judgment as a Matter of Law or, in the Alternative, A New Trial (the "JMOL Motion"). Funai, in turn, brings post-trial motions seeking: 1) entry of a permanent injunction; 2) enhanced damages; 3) attorneys' fees; and 4) costs and prejudgment interest. The Court's rulings on the Motions are set forth below.2
In the JMOL Motion, Daewoo seeks judgment as a matter of law, or in the alternative, a new trial, on the following grounds: 1) the Court erred in finding, on summary judgment, that Daewoo's products literally infringed the '018 patent; 2) no reasonable jury could find, based on the evidence presented at trial, that the accused products infringed the '210 patent under the doctrine of equivalents; 3) claims 1, 3, and 4 of the '538 patent are indefinite under 35 U.S.C. § 112 and claim 5 is either indefinite or not infringed or both; 4) the jury's damages award is speculative and unsupported by the evidence; 5) there was insufficient evidence from which a jury could have concluded that Daewoo willfully infringed the patents at issue.
Pursuant to Rule 50 of the Federal Rules of Civil Procedure, a court may grant a motion for judgment as a matter of law ("JMOL") against a party on a claim or issue where the party has been "fully heard on [that] issue during a jury trial" and the court finds that a "reasonable jury would not have a legally sufficient evidentiary basis" to find for that party. Fed.R. Civ. P. 50(a) & (b). Where a party moves for JMOL in a case that has been tried to a jury, the court must determine whether "there exists evidence of record upon which a jury might properly have returned a verdict in [the non-movant's] favor when the correct legal standard is applied." Markman v. Westview Instruments, Inc., 52 F.3d 967, 975 (Fed.Cir.1995) (quoting Jamesbury Corp. v. Litton Indus. Prods., Inc., 756 F.2d 1556, 1560 (Fed.Cir.1985) (emphasis added in Markman)); see also White v. Ford Motor Co., 312 F.3d 998, 1010 (9th Cir.2002) (). Thus, the court must conduct two inquiries. Markman, 52 F.3d at 975. First, the court must determine the correct law. Id. Next, the Court must review the jury's factual findings to determine whether they are supported by substantial evidence. Id. While the jury's factual findings are given "substantial deference," the legal standards the jury applies are considered de novo to determine, as a matter of law, whether the correct standards have been used. Id.
Even where the court finds that JMOL is not appropriate, it may order a new trial under Rule 59 of the Federal Rules of Civil Procedure. Rule 59 provides that a court may, following a jury trial, order a new trial "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). "Historically recognized grounds include but are not limited to `claims that the verdict is against the weight of the evidence, that the damages are excessive, or that, for other reasons, the trial was not fair to the party moving.'" Molski v. M.J. Cable, Inc., 481 F.3d 724, 729 (9th Cir.2007) (quoting Montgomery Ward & Co. v. Duncan, 311 U.S. 243, 251, 61 S.Ct. 189, 85 L.Ed. 147 (1940)).
The Ninth Circuit has held that a new trial may be granted "`only if the verdict is contrary to the clear weight of the evidence, is based upon false or perjurious evidence, or to prevent a miscarriage of justice.'" Id. (quoting Passantino v. Johnson & Johnson Consumer Prods., 212 F.3d 493, 510 n. 15 (9th Cir.2000)). In contrast to JMOL motions, in determining whether a verdict is contrary to the clear weight of the evidence, the court "has `the duty ... to weigh the evidence as [the court] saw it'" and may set aside the verdict even if it is supported by substantial evidence. Id. at 729 (quoting Murphy v. City of Long Beach, 914 F.2d 183, 187 (9th Cir.1990)).
An award of damages may be set aside where it is "`grossly excessive or monstrous, clearly not supported by the evidence or based only on speculation or guesswork.'" DSU Medical Corp. v. JMS Co., Ltd., 471 F.3d 1293, 1309 (Fed.Cir. 2006). Where the court determines that a damage award is excessive, the court may either grant the motion for a new trial or deny the motion conditional on the plaintiff accepting a remittitur, that is, agreeing to pay a lesser amount of damages that the court considers justified. Fenner v. Dependable Trucking, Co., Inc., 716 F.2d 598, 603 (9th Cir.1983). "The proper amount of a remittitur is the maximum amount sustainable by the evidence." Prendeville v. Singer, 155 Fed.Appx. 303, 304-305 (9th Cir.2005).
The '018 patent is entitled, "Loading Mechanism for a Video Cassette" and "discloses a mechanical subsystem for a VCR that performs loading and eject operations—that is, the subsystem opens and closes the door of a VCR, and moves the unit's cassette holder to and from the operating position." Memorandum and Order, filed December 20, 2006 ("2006 Summary Judgment Order") at 1-2, 2006 WL 3780715. Daewoo's challenge to the jury's verdict of infringement on the '018 patent turns on the Court's construction of the claim term "opened," as that term is used in claims 1 and 2 of the patent. In particular, Daewoo argues that the Court erred in finding, on summary judgment, that the "opened" claim limitation was met by Daewoo's T-Mecha loading mechanism because its reasoning was inconsistent with its own construction of that claim term. As a result, Daewoo argues, the question of whether this claim limitation was infringed—either literally or under the doctrine of equivalents—was never presented to the jury. Nor was evidence introduced establishing infringement of that claim term, Daewoo asserts. Consequently Daewoo argues, the jury's verdict of infringement of the '018 patent is not supported by substantial evidence or alternatively, that it is against the weight of the evidence.
Claim 1 of the 018 patent col. 8:28-56. Claim 2 is dependent on claim 1 and adds a cam mechanism on the slide arm for driving the door arm. In its claim construction order, the Court construed the term "opened" in claims 1 and 2 of the '018 patent to mean, "moved from a closed position such that the door has cleared the cassette so that ejecting the cassette will not interfere with the door." Claim Construction Order at 10.
In adopting this construction, the Court rejected as overly narrow Daewoo's proposed construction of "opened" as meaning "fully opened." Id. at 7. The Court reasoned that Daewoo confused "opened" with "moved" and that nothing in the claims precluded the door from additional movement after the door was "opened." Id. at 8. The Court acknowledged that in the preferred embodiment, there appeared to be no further movement of the door after it was "opened" but concluded that this was not a sufficient basis for finding that the claim term meant "fully opened." Id.
On the other hand, the Court rejected as overly broad Funai's assertion that "opened"...
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