Megadyne Medical Products v. Aspen Laboratories

• Decision Date: 28 February 1994
• Docket Number: No. 91-CV-852J.,91-CV-852J.
• Citation: 864 F. Supp. 1099
• Parties: MEGADYNE MEDICAL PRODUCTS, INC., a Utah corporation, Plaintiff, v. ASPEN LABORATORIES, INC., a Colorado corporation, et al., Defendants.
• Court: U.S. District Court — District of Utah

864 F. Supp. 1099

MEGADYNE MEDICAL PRODUCTS, INC., a Utah corporation, Plaintiff, v. ASPEN LABORATORIES, INC., a Colorado corporation, et al., Defendants.

No. 91-CV-852J.

United States District Court, D. Utah, Central Division.

February 28, 1994.

Rodney R. Parker, Max D. Wheeler, Harold G. Christensen, Snow, Christensen & Martineau, Larry G. Reed, Thomas N. Crowther, Crowther & Reed, James J. Lund, Taylor, Ennenga, Adams & Lowe, Salt Lake City, UT, Jonathan C. Dickey, Noemi C. Espinosa, William L. Anthony, Robert DeBerardine, Brobeck, Phleger & Harrison, Palo Alto, CA, for plaintiff.

Chris Wangsgard, Elizabeth S. Conley, Raymond J. Etcheverry, David G. Mangum, C. Kevin Speirs, Parsons Behle & Latimer, Salt Lake City, UT, Brewster Taylor, B. Aaron Schulman, Ross F. Hunt, Jr., Andrew E. Taylor, William E. Jackson, Larson & Taylor, Arlington, VA, David N. Webster, Caplin & Drysdale, Chartered, Washington, DC, for defendant.

MEMORANDUM DECISION AND ORDER

JENKINS, District Judge.

I. Introduction

Trial was conducted on this matter September 29 through October 13, 1993, before this Court. On October 13, 1993, the jury returned its special verdict, finding as follows: that plaintiff is the owner of United States Patent No. 4,785,807 ("the '807 patent"); that claims 1, 2, and 5 of the '807 patent are valid, enforceable, and infringed by defendant's gray and brown coated electrodes; that defendant's infringement of the '807 patent was willful; and, that $1.92 per infringing blade produced and sold is a reasonable royalty to be charged Aspen. On October 29, 1993, the Court entered Judgment in favor of MegaDyne Medical Products, Inc. ("Megadyne") and against Aspen Laboratories, Inc. ("Aspen"), in the amount of Two Million Ninety Two Thousand, Nine Hundred Forty-Five Dollars and Ninety Two Cents ($2,092,945.92), plus prejudgment interest and taxable costs.¹

On November 12, 1993, Aspen filed its renewed motion for judgment as a matter of law or in the alternative a motion for remittitur or new trial on grounds that the jury awarded a legally excessive royalty per blade (dkt. 189). On November 15, 1993, Aspen filed the following motions: motion for a new trial pursuant to Federal Rule of Civil Procedure Rule 59, on grounds that the Court's "exclusion" of the court-appointed-expert's (Dr. John LaCourse, Ph.D.) testimony and report was prejudicial error (dkt. 191), and; renewed motion for judgment as a matter of law notwithstanding the jury verdict on grounds that no substantial evidence existed on the record to support the jury's verdict on the issues of infringement, willful infringement, and validity of claims 1, 2, and 5 of the '807 patent (dkt. 193).

The parties fully briefed Aspen's motions and on January 6, 1994, the Court held a hearing on the matters. After considering the record, paying particular attention to counsel's colloquy with the Court regarding Dr. LaCourse (Trial Transcript ("Tr.") Vol. VIII at 1047, Vol. IX at 1248-1258, 1338-1340), and after hearing counsel's arguments on the motion, the Court denied Aspen's motion for new trial pursuant to Rule 59. The Court denied Aspen's Rule 59 motion in open court because the Court did not preclude Aspen from calling Dr. LaCourse as a witness. The Court did, however, state several times that it did not intend to call Dr. LaCourse as its own witness. During trial, the Court made it a point to discuss the matter of Dr. LaCourse with Aspen's counsel in order to make its intentions clear:

THE COURT: Secondly, while you are here, I want you to be clear about the matters that you previously brought to my attention. The suggestions that you had earlier, the impression of the Court was that you wanted the Court to call Mr. LaCourse as a witness, and I may be misleading you. I may be misleading you. The Court has indicated that he doesn't intend to call the good doctor as a witness.

MS. CONLEY: That's right.

THE COURT: And the Court has indicated its reasons for not wanting to call the good doctor as a witness. I don't want to have anybody be under the impression that the Court is in any way refusing to allow anybody to do anything in reference to calling persons as witnesses. People do what they do, and they run lawsuits as they run them, but the fact that you call him as a witness, if you do, doesn't necessarily mean that we will listen to him, but I don't want to make that determination prematurely, but I don't want the impression given or misunderstood, that I prohibited somebody from doing something. It is still a free country.

. . . . .

MS. CONLEY: What if I called him? Would you listen to him?

THE COURT: Well, that remains to be seen. I don't know what he's going to say at this time.

MS. CONLEY: Okay. I will let you know.

THE COURT: Yeah.

MS. CONLEY: I will give him a call.

THE COURT: You should all be concerned with the provisions of Rule 706, and particularly the amendments to Rule 706 that are fairly recent, but I don't want to, in any way, interfere with what powers that people have, and my prior indications may have been unclear. I was speaking for the Court, and I only felt that it was fair to call that to your attention.

Tr.Vol. IX at 1338-1340. The Court reserved on the remaining motions.

II. Standards of Review

A. Motion for Judgment as a Matter of Law Notwithstanding the Verdict ("judgment n.o.v.")

A motion for judgment as a matter of law is made pursuant to Rule 50(a)(1) of the Federal Rules of Civil Procedure, which provides:

If during a trial by jury a party has been fully heard with respect to an issue and there is no legally sufficient evidentiary basis for a reasonable jury to have found for that party with respect to that issue, the court may grant a motion for judgment as a matter of law against that party on any claim, counterclaim, cross-claim, or third party claim that cannot under the controlling law be maintained without a favorable finding on that issue.

The Court reviews the evidence as it was presented at trial and in the light most favorable to the non-moving party. Brown v. McGraw-Edison Co., 736 F.2d 609, 612-13 (10th Cir.1984); Yazzie v. Sullivent, 561 F.2d 183, 188 (10th Cir.1977). In determining whether to grant a motion for judgment n.o.v., the Court may not attempt to weigh the evidence, pass on any witnesses' credibility, or substitute its judgment for that of the jury. Brown, 736 F.2d at 613.²

B. Motion for a New Trial

Federal Rule of Civil Procedure 59(a) provides:

A new trial may be granted to all or any of the parties and on all or part of the issues (1) 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....

A new trial may be appropriate where the jury verdict is against the weight of the evidence, the damages are excessive, a party was prejudiced by erroneous evidentiary rulings, or the trial was not fair to the moving party. Montgomery Ward & Co. v. Duncan, 311 U.S. 243, 251, 61 S.Ct. 189, 194, 85 L.Ed. 147 (1940); Holmes v. Wack, 464 F.2d 86, 88-89 (10th Cir.1972); Medtronic, Inc. v. Intermedics, Inc., 799 F.2d 734, 740-41 (Fed. Cir.1986). The standard for granting a motion for a new trial is less stringent than the standard applied when considering a motion for judgment n.o.v.. In granting a motion for new trial, the court must find that the jury verdict is "clearly, decidedly or overwhelmingly against the weight of the evidence." Prebble v. Brodrick, 535 F.2d 605, 617 (10th Cir.1976) (citing Locke v. Atchison, Topeka & Santa Fe Ry. Co., 309 F.2d 811, 817 (10th Cir.1962); Brown v. McGraw-Edison Co., 736 F.2d at 616. It must be clear that an erroneous result was reached. Frank v. Bloom, 634 F.2d 1245, 1254 (10th Cir.1980). In contrast to a motion for judgment n.o.v., when determining whether or not to grant a motion for new trial, the Court may consider witness credibility and the weight of the evidence. 9 WRIGHT & MILLER, FEDERAL PRACTICE AND PROCEDURE, § 2531, at 575 (1971).

C. Remittitur

A jury verdict may only be remitted when the award is "so excessive or inadequate as to shock the judicial conscience and to raise an irresistible inference that passion, prejudice, corruption or other improper cause invaded the trial." Karns v. Emerson Elec. Co., 817 F.2d 1452, 1460 (10th Cir.1987) (quoting Barnes v. Smith, 305 F.2d 226, 228 (10th Cir.1962). If a damages award is deemed excessive, but does not taint the finding of liability, a court may order a remittitur. Mason v. Texaco, Inc., 948 F.2d 1546, 1560 (10th Cir.1991), cert. denied, ___ U.S. ___, 112 S.Ct. 1941, 118 L.Ed.2d 547 (1992).

III. Discussion

A. Aspen's Renewed Motion for Judgment as a Matter of Law or in the Alternative a Motion for Remittitur or New Trial

Aspen argues that upon finding Aspen liable for infringing the '807 patent, the jury awarded a legally excessive royalty per blade and that therefore Aspen is entitled to judgment as a matter of law with respect to the damage award. In the alternative, Aspen argues that it is entitled to a remittitur or a new trial because the jury's verdict is contrary to the law and to the Court's instructions.

At trial, Megadyne sought a reasonable royalty as its damages. The Court instructed the jury that a "reasonable royalty" is determined by imagining a hypothetical negotiation between a willing buyer the infringer/Aspen and a willing seller the patent owner/Megadyne and attempting to determine what royalty the buyer and seller would have agreed on at the time the infringement began, based on the facts that existed at that time. See Jury Instruction Nos. 60-62; Trans-World Mfg. Corp. v. Al Nyman & Sons, Inc., 750 F.2d 1552, 1568 (Fed.Cir.1984). The Court also instructed the jury as to the various factors it could consider when determining what a reasonable royalty should be. See Jury Instruction No. 60-62. The Court further instructed the jury that "a royalty would not...