Invista North Am. S.A.R.L v. M & G U.S. Corp.

• Decision Date: 31 March 2014
• Docket Number: Civ. No. 11–1007–SLR–CJB
• Citation: 35 F.Supp.3d 583
• Court: U.S. District Court — District of Delaware
• Parties: Invista North America S.A.R.L. and Auriga Polymers Inc., Plaintiffs, v. M & G USA Corporation and M & G Polymers USA, LLC, Defendants.

35 F.Supp.3d 583

Invista North America S.A.R.L. and Auriga Polymers Inc., Plaintiffs
v.
M & G USA Corporation and M & G Polymers USA, LLC, Defendants.

Civ. No. 11–1007–SLR–CJB

United States District Court, D. Delaware.

Signed March 31, 2014

35 F.Supp.3d 590

William J. Marsden, Jr., Esquire, Douglas E. McCann, Esquire, A. Martina Hufnal, Esquire, and Robert M. Oakes, Esquire of Fish & Richardson P.C., Wilmington, Delaware. Counsel for Plaintiff INVISTA North America S.à.r.l. Of Counsel:Jonathan E. Singer, Esquire of Fish & Richardson P.C.

John W. Shaw, Esquire, and Jeffrey T. Castellano, Esquire of Shaw Keller LLP, Wilmington, Delaware. Counsel for Plaintiff Auriga Polymers Inc. Of Counsel: William Cory Spence, Esquire, and Reid P. Huefner, Esquire of Kirkland & Ellis LLP.

Richard L. Horwitz, Esquire, David E. Moore, Esquire, and Bindu A. Palapura, Esquire of Potter Anderson & Corroon LLP, Wilmington, Delaware. Counsel for Defendants. Of Counsel: Megan D. Dortenzo, Esquire, and Arthur Licygiewicz, Esquire of Thompson Hine LLP.

MEMORANDUM OPINION

ROBINSON, District Judge

I. INTRODUCTION

Plaintiffs INVISTA North America S.a.r.l. (“Invista”) and Auriga Polymers Inc.¹ (“Auriga”) (collectively, “plaintiffs”) sued M & G USA Corporation and M & G Polymers USA, LLC (collectively, “defendants”) for infringement of U.S. Patent Nos. 7,919,159 (“the '159 patent), 7,943,216 (“the '216 patent”), and 7,879,930 (“the '930 patent”) (collectively, “the patents-in-suit”). (D.I. 1; D.I. 7) Defendants asserted counterclaims seeking declaratory judgment of non-infringement and invalidity of the patents-in-suit. (D.I.42)

In a memorandum opinion and order dated June 25, 2013, the court resolved several summary judgment motions.² (D.I. 382; D.I. 383) The parties proceeded to trial on July 18, 2013 on infringement of claim 4 and on the validity of several asserted claims of the '216 patent. At the close of evidence, the court granted plaintiffs' motion for judgment as a matter of law (“JMOL”) regarding infringement of claim 4. On July 24, 2013, the jury returned a verdict that the '216 patent was valid. Currently before the court are several motions: defendants' renewed motions for JMOL on invalidity and non-infringement (D.I. 470; D.I. 473); plaintiffs' motion for an injunction (D.I.467); defendants' motion for leave to file amended pleadings (D.I.365); defendants' motion for reargument of the court's July 16, 2013 oral order (D.I.444); and the parties' motions for attorney fees (D.I. 451; D.I. 452; D.I. 455). The court has jurisdiction over these matters pursuant to 28 U.S.C. § 1338.

II. BACKGROUND

A. Technology Overview

Plastic polymers are commonly used for making food and beverage containers and

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offer several advantages over the use of glass or metal. They are lighter in weight, have less breakage, and can potentially lower costs. ('216 patent, 1:25–27) Polymers are synthesized by reacting monomers to form a larger polymer chain, and made into bottles by a method called stretch blow molding, wherein the polymer resin is typically dried, melted and extruded into preforms. (7:56–58) The preforms are then heated and blown-molded into bottles of desired shape and size. (7:62–64)

One type of polymer, polyester, has been widely used in the bottling industry for many years. Polyethylene terephthalate (“PET”) is a common example of a polyester. (2:34, 8:16) Polyesters can be prepared by reacting diesters (e.g., dicarboxylic ester) or diacids (e.g., terephthalic acid) with ethylene glycol (“EG”). (3:27–31). Because of polyesters' inferior gas-barrier properties, these materials limit the shelf life of oxygen-sensitive foods, condiments, and beverages (such as juice, soda, or beer). (1:27–33)

In the prior art, it was known that the use of low-gas permeable polymers, known as partially aromatic polyamides (or “nylons”), with polyesters increases barrier properties. (1:31–38) Partially aromatic polyamides have non-scavenging, or “passive,” barrier properties, meaning they restrict carbon dioxide leakage from, and oxygen intrusion into, a container by obstructing the paths of gas molecules. (1:21) However, partially aromatic polyamides are not miscible with polyesters like PET, and they also give containers an undesirable yellow and hazy appearance. (1:44–46)

It was commonly known in the art that combining a thin layer of a partially aromatic polyamide, like MXD6,³ with one or more layers of polyester in multilayer bottles increased barrier properties. (1:35–43) This multilayer system, however, produced bottles with undesirable haze. (1:33–35) It was also known in the art that the addition of a transition metal catalyst, such as cobalt salt, improved the gas barrier properties of polyamide multilayer containers and blends with PET by promoting active oxygen scavenging. (2:32–48)

B. The '216 Patent

According to the patentee, no prior art disclosed a monolayer container with a desirable balance of high gas barrier properties and low yellowness and haze, as taught by the '159 and '216 patents. ('216 patent, 2:55–61, 2:65–3:13) The invention is useful as packaging for oxygen-sensitive foods that require a long shelf life. (2:55–67) The '216 patent discloses a three component composition. Claim 1 of the '216 patent recites:

A composition for containers comprising:

a copolyester comprising a metal sulfonate salt;

a partially aromatic polyamide;

and a cobalt salt.

Dependant claim 4 recites “[t]he composition of claim 1, wherein said cobalt salt is present in a range from about 20 to about 500 ppm of said composition.”

The “copolyester comprising a metal sulfonic salt” is termed a “compatibilizer.” A metal sulfonate salt discussed in the '216 patent is 5–sulfoisophthalic acid (“SIPA”). (8:41)

III. STANDARDS OF REVIEW

A. Renewed Motion for Judgment as a Matter of Law

To prevail on a renewed motion for judgment as a matter of law following a

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jury trial, the moving party “ ‘must show that the jury's findings, presumed or express, are not supported by substantial evidence or, if they were, that the legal conclusions implied [by] the jury's verdict cannot in law be supported by those findings.’ ” Pannu v. lolab Corp., 155 F.3d 1344, 1348 (Fed.Cir.1998) (quoting Perkin–Elmer Corp. v. Computervision Corp., 732 F.2d 888, 893 (Fed.Cir.1984) ). “ ‘Substantial’ evidence is such relevant evidence from the record taken as a whole as might be acceptable by a reasonable mind as adequate to support the finding under review.” Perkin–Elmer Corp., 732 F.2d at 893. In assessing the sufficiency of the evidence, the court must give the non-moving party, “as [the] verdict winner, the benefit of all logical inferences that could be drawn from the evidence presented, resolve all conflicts in the evidence in his favor, and in general, view the record in the light most favorable to him.”Williamson v. Consol. Rail Corp., 926 F.2d 1344, 1348 (3d Cir.1991) ; Perkin–Elmer Corp., 732 F.2d at 893. The court may not determine the credibility of the witnesses nor “substitute its choice for that of the jury between conflicting elements of the evidence.” Perkin–Elmer Corp., 732 F.2d at 893. In sum, the court must determine whether the evidence reasonably supports the jury's verdict. See Dawn Equip. Co. v. Kentucky Farms Inc., 140 F.3d 1009, 1014 (Fed.Cir.1998).

B. Motion for a New Trial

Federal Rule of Civil Procedure 59(a) provides, in pertinent part:

A new trial may be granted to all or any of the parties and on all or part of the issues in an action in which there has been a trial by jury, for any of the reasons for which new trials have heretofore been granted in actions at law in the courts of the United States.

Fed. R. Civ. P. 59(a). The decision to grant or deny a new trial is within the sound discretion of the trial court and, unlike the standard for determining judgment as a matter of law, the court need not view the evidence in the light most favorable to the verdict winner. See Allied Chem. Corp. v. Daiflon, Inc., 449 U.S. 33, 36, 101 S.Ct. 188, 66 L.Ed.2d 193 (1980) ; Olefins Trading, Inc. v. Han Yang Chem Corp., 9 F.3d 282 (3d Cir.1993) ; LifeScan Inc. v. Home Diagnostics, Inc., 103 F.Supp.2d 345, 350 (D.Del.2000) (citations omitted); see also 9A Wright & Miller, Federal Practice and Procedure § 2531 (2d ed.1994) (“On a motion for new trial the court may consider the credibility of witnesses and the weight of the evidence.”). Among the most common reasons for granting a new trial are: (1) the jury's verdict is against the clear weight of the evidence, and a new trial must be granted to prevent a miscarriage of justice; (2) newly-discovered evidence exists that would likely alter the outcome of the trial; (3) improper conduct by an attorney or the...