Ironburg Inventions Ltd. v. Valve Corp.
| Decision Date | 26 May 2021 |
| Docket Number | C17-1182 TSZ |
| Court | U.S. District Court — Western District of Washington |
| Parties | IRONBURG INVENTIONS LTD., Plaintiff, v. VALVE CORPORATION, Defendant. |
THIS MATTER comes before the Court on defendant Valve Corporation's motion for judgment as a matter of law ("JMOL") or new trial, docket no. 435, and plaintiff Ironburg Inventions Ltd.'s motion for enhanced damages, docket no. 439. Having reviewed all papers filed in support of, and in opposition to, each motion, and having concluded that oral argument, which neither party requested, is unnecessary, the Court enters the following order.
A virtual jury trial commenced in this matter on January 25, 2021. On February 1, 2021, the jury rendered a verdict in favor of plaintiff Ironburg Inventions Ltd. and against defendant Valve Corporation, finding that defendant had willfully infringed Claims 2, 4, 7, 9, 10, 11, and 18 of United States Patent No. 8,641,525 (the "'525 Patent"),1 andawarding to plaintiff $4,029,533.93 in damages. See Verdict (docket nos. 416 & 417). Defendant seeks judgment as a matter of law or, in the alternative, a new trial, arguing that the jury's findings of infringement and willfulness, as well as its award of damages, were unsupported by the evidence. In contrast, plaintiff asks the Court to treble the jury's award of damages pursuant to 35 U.S.C. § 284.
In his opening statement, counsel for defendant told the jury that "this is about as straightforward a patent case as you could ever hope to get because every decision that you will have to make in this trial you can make with just two pieces of evidence." Tr. (Jan. 26, 2021) at 197:11-14 (docket no. 431). According to defendant's attorney, the "first piece of essential evidence" was the '525 Patent. Id.
at 197:15-16. And, the second "piece of essential evidence" was the accused device, a video game apparatus known as the "Steam Controller." Id. at 198:11-13. Defendant's lawyer asked the jury to "focus on those two pieces of essential evidence," which would "be at the heart of this entire trial," and he indicated that, if the jury did so and based its decision "on reality," it would have"no trouble making the right decision at the end of this case." Id.
at 199:17-22. During closing argument, defendant's attorney reminded the jurors about the "two pieces of essential evidence" - the patent and the controller - and proclaimed that "[e]verything that you need to do at the end of this trial you can do with these two things." Tr. (Jan. 29, 2021) at 940:10-12 (docket no. 426). The Court agrees that this case is straightforward and can be decided on the '525 Patent and the accused device. The jury appears to have done exactly that, but defendant does not like the result the jury reached. Defendant's dissatisfaction does not constitute grounds for judgment as a matter of law or a new trial.
The '525 Patent was admitted into evidence as Trial Exhibit 1. See Am. Ex. List (docket no. 398); see also Ex. A to 2d Am. Compl. (docket no. 44-1). The '525 Patent discloses an "improved controller for a game console that is intended to be held by a user in both hands in the same manner as a conventional controller," but which has "two additional controls located on the back in positions to be operated by the middle fingers of a user." See '525 Patent at Abstract (numerical cross-references to drawings omitted). Claim 1 of the '525 Patent, on which all claims that the jury found were infringed depend, reads as follows:
at Col. 4, Lines 41-55. At trial, defendant argued that the '525 Patent did not read on the accused device because the Steam Controller lacked two separate members that (i) are "elongate," (ii) extend substantially the full distance between the top and bottom edges, and (iii) are inherently resilient and flexible. Defendant repeats these assertions in its motion for JMOL or new trial.2
Defendant does not deny that the Steam Controller contains the additional limitations set forth in the dependent claims at issue, namely Claims 2, 4, 7, 9, 10, 11, and 18. Those additional limitations are as follows:
at Col. 4, Lines 56-59 & 63-65; Col. 5, Lines 4-6 & 11-16; Col. 6, Lines 9-10. With respect to Claims 7, 9, 10, and 11, defendant's position is simply that the accused device does not contain the elongate members required by Claim 1. The jury having found otherwise, however, defendant does not separately contend that the elongate members are not mounted within a recess in the case of the controller, for purposes of Claim 7, or that they are not between about 1 and 3 mm in thickness, for purposes of Claims 9, 10, and 11.
The accused device was admitted into evidence as Trial Exhibit 115. See Am. Ex. List (docket no. 398); see also Minutes (docket no. 405). Each juror received a Steam Controller via overnight delivery and had access to the accused device during closing arguments and deliberations. See Tr. (Jan. 29, 2021) at 895:9-12, 898:15-17, 940:13-16 (docket no. 426). The front of the Steam Controller is depicted in the following excerpts from other admitted exhibits:
Image materials not available for display.
Image materials not available for display.
Trial Ex. 133 The back of the accused device is shown in the following photograph of the Steam Controller that was provided to the Court:
Image materials not available for display.
The questions presented to the jury, and now before the Court, involve the center panel, which can be removed from the device:
Image materials not available for display.
top view
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(center panel)
At trial, plaintiff's theory was that the left and right ends of the center panel (circled in the above illustration) constitute the requisite elongate members that extend substantially the full distance between the top and bottom edges of the controller and are inherently resilient and flexible. Plaintiff's counsel explained to the jury that the middle (relativelyflat) portion of the center panel is merely additional material, which cannot form the basis of an infringement defense. See Tr. (Jan. 29, 2021) at 988:13-15 (docket no. 426). In contrast, defendant contended that the entire center panel (described by defendant as the "battery door"), and not just the two ends of the panel, functioned as a "back control," and thus, the Steam Controller did not have at least two elongate members that extended the requisite distance and were resilient and flexible. In reaching its verdict, the jury necessarily rejected defendant's view.
The Patent Act allows the Court to "increase the damages up to three times the amount found [by a jury] or assessed [by the Court]." 35 U.S.C. § 284. The Supreme Court has interpreted this provision as authorizing "punitive" damages in cases of "willful or bad-faith infringement." See Halo Elecs., Inc. v. Pulse Elecs., Inc.
, 136 S. Ct. 1923, 1930 (2016). The discretion enjoyed by district courts to increase damages pursuant to § 284 has narrowed over time, and such enhancements "are generally reserved for egregious cases of culpable behavior." Id. at 1932. The type of conduct warranting treble damages is "willful, wanton, malicious, bad-faith, deliberate, consciously wrongful, flagrant, or . . . characteristic of a pirate." Id. Misbehavior of this caliber, however, does not always dictate an award of treble damages, and the Court must consider the circumstances of each case in exercising its discretion in deciding whether to increase damages and, if so, by what amount. Id. at 1933. The Court must avoid enhancing damages in cases arguably classified as "garden-variety" so as not to disruptthe delicate balance between promoting innovation through patent protection and facilitating imitation and refinement through imitation, which are "necessary to invention itself and the very lifeblood of a competitive economy." Id.
In this matter, the Court exercises its discretion not to increase the damages calculated by the jury. See Presidio Components, Inc. v. Am. Tech. Ceramics Corp.
, 875 F.3d 1369, 1382 (Fed. Cir. 2017) (). In doing so, the Court takes into account that Claim 1 of the '525 Patent has been declared invalid by the PTAB, and thus, the features that plaintiff accuses defendant of intentionally copying and/or making "no...
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