Mass Engineered Design, Inc. v. Planar Sys., Inc.
| Decision Date | 08 November 2019 |
| Docket Number | Case No. 3:16-cv-1510-SI |
| Citation | 426 F.Supp.3d 680 |
| Parties | MASS ENGINEERED DESIGN, INC., Plaintiff, v. PLANAR SYSTEMS, INC., Defendant. |
| Court | U.S. District Court — District of Oregon |
John Mansfield, Harris Bricken, llp, 511 SW 11th Street, Suite 201, Portland, OR 97214; John J. Edmonds, Stephen F. Schlather, Shea N. Palavan, Brandon G. Moore, and Eric R. Carr, Collins Edmonds & Schlather, pllc, 1616 South Voss Road, Suite 125, Houston, TX 77057 Of Attorneys for Plaintiff.
Jacob S. Gill, Stoll Stoll Berne Lokting & Shlachter, pc, 209 SW Oak Street, Suite 500, Portland, OR 97204; Jenny W. Chen, Chen IP Law Group, 7F, No. 1, Alley 30, Lane 358, Rueiguang Road, Neihu District, Taipei Taiwan 114 (R.O.C.); Andrew T. Oliver, Amin, Turocy & Watson, llp, 160 W. Santa Clara Street, Suite 975, San Jose, CA 95113. Of Attorneys for Defendant.
Plaintiff, Mass Engineered Design, Inc. ("Mass"), brought this lawsuit against Defendant, Planar Systems, Inc. ("Planar"), alleging infringement of U.S. Patent No. RE36,978 (the "978 Patent") and U.S. Patent No. 8,102,331 (the "331 Patent"). A jury trial was held, beginning April 24, 2018 and ending May 8, 2018. The jury found that Planar was liable for direct infringement, active inducement, and as a contributory infringer, and that neither the 978 Patent nor the 331 Patent were invalid. The jury awarded Mass money damages in the total amount of $1,150,000. The jury, however, was unable to reach a unanimous verdict on the question of whether Planar's infringement was willful. The Court declared a mistrial only on that question, and otherwise accepted the jury's verdict. The Court then scheduled a new jury trial solely on the question of willfulness. The Court held a two-day jury trial beginning July 9, 2018. The jury found for Planar, finding that Mass had not proven that Planar's infringement was willful. The Court also held a two-day bench trial on Planar's claim that Mass had engaged in inequitable conduct. The Court found in favor of Mass.
Before the Court are three post-judgment motions: (1) Plaintiff's Motion for an Exceptional Case Finding and Attorney's Fees under 35 U.S.C. § 285 (ECF 441), in which Mass seeks attorney's fees in the amount of $185,000 for Planar's allegedly improper litigation conduct; (2) Defendant's Renewed Motion for Judgment as a Matter of Law, or, in the Alternative, for a New Trial (ECF 443); and (3) Defendant's Motion to Amend the Judgment and for New Trial Pursuant to Rule 59 (ECF 444). For the reasons that follow, all three post-trial motions are DENIED.
Under 35 U.S.C. § 285, "[t]he court in exceptional cases may award reasonable attorney fees to the prevailing party." "[A]n ‘exceptional’ case is simply one that stands out from others with respect to the substantive strength of a party's litigating position (considering both the governing law and the facts of the case) or the unreasonable manner in which the case was litigated." Octane Fitness, LLC v. ICON Health & Fitness, Inc. , 572 U.S. 545, 554, 134 S.Ct. 1749, 188 L.Ed.2d 816 (2014) (alteration added). A court "should determine whether a case is exceptional on a case-by-case basis, considering the totality of the circumstances." ATEN Int'l Co. v. Uniclass Tech. Co. , 932 F.3d 1371, 1373 (Fed. Cir. 2019). Such circumstances may include "frivolousness, motivation, objective unreasonableness (both in the factual and legal components of the case) and the need in particular circumstances to advance considerations of compensation and deterrence." Octane Fitness , 572 U.S. at 554 n.6, 134 S.Ct. 1749 (quotation marks omitted).
"The grant or denial of a motion for judgment as a matter of law is a procedural issue not unique to patent law, reviewed under the law of the regional circuit in which the appeal from the district court would usually lie." Acco Brands, Inc. v. ABA Locks Mfr. Co. , 501 F.3d 1307, 1311 (Fed. Cir. 2007). Thus, the Court follows Ninth Circuit law in evaluating Planar's motion for judgment as a matter of law.
Judgment as a matter of law is proper if "the evidence permits only one reasonable conclusion, and that conclusion is contrary to the jury's verdict." E.E.O.C. v. Go Daddy Software, Inc. , 581 F.3d 951, 961 (9th Cir. 2009) (quotation marks omitted); see also Weaving v. City of Hillsboro , 763 F.3d 1106, 1111 (9th Cir. 2014) (). Because a motion under Rule 50(b) is a renewed motion, a party cannot "raise arguments in its post-trial motion for judgment as a matter of law that it did not first raise in its Rule 50(a) pre-verdict motion." Go Daddy Software , 581 F.3d at 961 (quotation marks omitted).
In evaluating a motion for judgment as a matter of law, the Court must view all the evidence in the light most favorable to the non-moving party and draw all reasonable inferences in that party's favor. Experience Hendrix, L.L.C. v. Hendrixlicensing.com, Ltd. , 762 F.3d 829, 842 (9th Cir. 2014). The Court may not, however, make credibility determinations, weigh the evidence, or "substitute its view of the evidence for that of the jury." Krechman v. City of Riverside , 723 F.3d 1104, 1110 (9th Cir. 2013) (quotation marks omitted). A jury's verdict must be upheld if it is supported by substantial evidence. Escriba v. Foster Poultry Farms, Inc. , 743 F.3d 1236, 1242 (9th Cir. 2014) ; Johnson v. Paradise Valley Unified Sch. Dist. , 251 F.3d 1222, 1227 (9th Cir. 2001). Substantial evidence is "such relevant evidence as reasonable minds might accept as adequate to support a conclusion[,] even if it is possible to draw two inconsistent conclusions from the evidence." Weaving , 763 F.3d at 1111 (quotation marks omitted).
As with Rule 50 motions, Rule 59 motions in patent cases are governed by the law of the regional circuit. Chamberlain Grp., Inc. v. Techtronic Indus. Co. , 935 F.3d 1341, 1350 (Fed. Cir. 2019). The Court "may grant a new trial 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." Molski v. M.J. Cable, Inc. , 481 F.3d 724, 729 (9th Cir. 2007) (quotation marks omitted); see also Shimko v. Guenther , 505 F.3d 987, 993 (9th Cir. 2007). Unlike a Rule 50 determination, the Court is not required to view the evidence in the light most favorable to the non-moving party. Experience Hendrix , 762 F.3d at 842. Rather, the Court "can weigh the evidence and assess the credibility of the witnesses." Id. (citing Kode v. Carlson , 596 F.3d 608, 612 (9th Cir. 2010) (per curiam)). A judge should not award a new trial unless she is "left with the definite and firm conviction that a mistake has been committed." France Telecom S.A. v. Marvell Semiconductor Inc. , 82 F.Supp.3d 987, 992 (N.D. Cal. 2015) (quoting Landes Constr. Co. v. Royal Bank of Canada , 833 F.2d 1365, 1371-72 (9th Cir. 1987) ).
Mass argues that the Court should find that certain aspects of this case were litigated unreasonably, and thus Mass is entitled to a portion of its attorney's fees. Mass argues that particular arguments in certain motions were unreasonably litigated and resulted in Mass having to incur unreasonable attorney's fees. Mass also argues that Planar asserted before trial the defense of reliance on the opinion of counsel and a significant amount of prior art, causing Mass to expend resources preparing to defend those issues, but then dropped the reliance of counsel defense shortly before trial and at trial only submitted a very limited number of prior art references to the jury. Mass contends that this litigation conduct was unreasonable and makes this case exceptional. Mass also notes that in a few of the Court's opinions and orders, the Court noted that some of Planar's arguments were "without merit."1
The fact that the Court rejected some of Planar's legal arguments during this complex, hard-fought patent litigation does not mean that Planar unreasonably litigated this case to the point that it rises to the level of an exceptional case warranting an award of attorney's fees. See, e.g. , ATEN , 932 F.3d at 1374 . The Court has considered Plaintiff's litigation conduct with respect to the strengths of its arguments and positions and does not find that they were "so objectively unreasonable or exceptionally meritless as to stand out from other cases." Id.
Regarding Planar's "shifting" positions on whether to use the defense of an opinion of counsel, the Court does not find this conduct to be objectively unreasonable. Planar's original counsel did not assert this defense. Planar's replacement counsel requested the ability to add this as a defense, based on the advice of counsel that HighGrade received. Planar argued that its original counsel had not provided adequate services and had perhaps engaged in malpractice. The Court allowed Planar to add this defense. After further discovery, learning more about Mass's infringement case, and learning more about the specifics of the advice of counsel, Planar's new counsel ultimately decided not to rely on this defense at trial and to exercise its statutory right not to have the advice of counsel disclosed at trial. This was not an unreasonable trial strategy, nor was it unreasonable for Planar's counsel to change tactics after learning more information.
Regarding Planar's...
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